DETAILED ACTION
Claims 2, 4, 9, 11, 17, 19, 21-23, 27, 30, 41, 55-57, 59, 61, 65 and 70 are currently pending in the instant application.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/17/2026 has been entered.
Response to Amendment
Applicant’s arguments and amendments in a response filed 06/17/2026 have been fully considered and entered into the application. Applicant has overcome
The 35 U.S.C. 102(a)(1) rejection of claims 22-23. However since the proviso does not appear to have support in the Specification, it has been rejected under 112(a) as more fully discussed below.
The 35 U.S.C. 102(a)(1) rejection of claims 55-57, 59, 61 and 65 in view of Applicant’s amendment.
Regarding the 35 U.S.C. 103 rejection of claims 27 and 41, Applicant argues unexpected properties of homologues in the instant case but shows % repellency and % mortality for homologues for compounds MTFI-5-4d and MTFI-5-4e. However, these compounds have structure
PNG
media_image1.png
174
544
media_image1.png
Greyscale
. Thus, the objective evidence of nonobviousness is not commensurate in scope with the claims which the evidence is offered to support. In order for the prior art rejections to be overcome, the scope of the showing must be commensurate with the scope of the claims. See In re Peterson, 315 F.3d 1325, 1330, 65USPQ2d 1379 (Fed. Cir. 2003).
Specifically rejection was made over compound of JP 08295663, which corresponds to a compound of formula X wherein X1 is CR3, R3 is H, R2 and R4 are (C1-C6)alkyl substituted with halogen, R1 is H, X2 is C(O), J is CF3 or (CF2)CF3. However, Applicant cites data from the Specification that has R1, R2, R3 and R4 as F. Thus, Applicant’s unexpected results have only been shown for scope of compounds having X1 is CR3, R3 is F, R1, R2, and R4 as F, X2 is C(O), J is (CF2)CF3. No evidence of unexpected results for a compound of JP 08295663 has been shown. Applicants have failed to show that the unexpected results would occur over the entire scope of the claims. Thus it cannot be determined if unexpected % repellency and % mortality would be found with compounds in which R3 is H, R2 and R4 are (C1-C6)alkyl substituted with halogen, R1 is H or if such a result is found only when X1 is CR3, R3 is F, R1, R2, and R4 as F. The showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
However, the 35 U.S.C 103(a) rejection has been under Tsikolia et al instead and a new matter rejection under 112(a) and 112(d) has been made as well.
Election/Restrictions
Applicant’s election without traverse of Group II, drawn to claims 22-23, 27, 30 and 41 with election of species
PNG
media_image2.png
162
244
media_image2.png
Greyscale
in the reply filed on 07/29/2025 is acknowledged. Group III, drawn to claims 55-57, 59, 61 and 65, was previously rejoined and considered along with Group II due to the overlap in scope of the compounds of Group II and III.
Thus, the restriction requirement between groups II-III as set forth in the Office action mailed on 06/10/2025 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Claims 2, 4, 9, 11, 17, 19, 21 and 70 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/29/2025.
In accordance with the MPEP, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species and the claims drawn to the elected species are allowable, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
Applicant's elected species appears allowable over the prior art of record. Therefore, the search of the Markush-type claim has been extended to the non-elected species of
PNG
media_image3.png
174
238
media_image3.png
Greyscale
and
PNG
media_image4.png
196
154
media_image4.png
Greyscale
wherein R is CF2CF3. As prior art has been found which anticipates the above identified nonelected species, the Markush-type claims are rejected as follows and the subject matter of the claims drawn to nonelected species held withdrawn from consideration. Claims 22-23, 27, 41, 55-57, 59, 61 and 65 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since art was found on the nonelected species, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
The remaining subject matter of claims 22-23, 27, 30 in its entirety, 41, 55-57, 59, 61 and 65 that are not drawn to the above elected invention stand withdrawn under 37 CFR 1.142(b) as being non-elected subject matter. The remaining compounds which are not within the elected invention are independent and distinct from the elected invention as they differ in structure and composition. Therefore the compounds, which are withdrawn, have been restricted as the withdrawn subject matter is patentably distinct from the elected subject matter as it differs in structure and element and would require separate search considerations. In addition, a reference, which anticipates one group, would not render obvious the other. Thus all claims containing compounds falling outside the search strategy of the elected compound and structure shown above are heretofore directed to non-elected subject matter and are withdrawn from consideration under 35 U.S.C. § 121 and 37 C.FR. § 1.142(b). A complete reply to the non-final rejection must include cancellation of non-elected claims include cancellation of non-elected claims or other appropriate action (37 CFR 1.144). See MPEP § 821.01.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b). If one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claim Objections
Claims 22 and 27 are objected to because of the following informalities: it has blurry structures under the definition of J. Appropriate correction is required.
Claim 55 is objected to for failing to comply with rule 1.141(a) (pasted below for convenience). Claim 55 has approximately 114 species. This number of compounds cannot be considered a reasonable number according to rule 1.141(a). In re Fressola, 22 USPQ 2nd 1828, indicates that the Examiner may reject for Applicants’ failure to follow a Rule.
§ 1.141 Different inventions in one national application.
(a) Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form (§ 1.75) or otherwise include all the limitations of the generic claim.
In the instant case, claim 55 contains approximately 114 compound species, many of which are not encompassed by the scope of generic Formula (X) found in claim 22. Although Claim 55 is an independent claim, there are a variety of compounds such as
PNG
media_image5.png
118
302
media_image5.png
Greyscale
PNG
media_image6.png
114
302
media_image6.png
Greyscale
PNG
media_image7.png
120
302
media_image7.png
Greyscale
,
PNG
media_image8.png
148
284
media_image8.png
Greyscale
,
PNG
media_image9.png
136
234
media_image9.png
Greyscale
. ,
PNG
media_image10.png
180
224
media_image10.png
Greyscale
PNG
media_image11.png
142
560
media_image11.png
Greyscale
that have all different structural variables (i.e. phenyl, pyridinyl,
PNG
media_image12.png
104
104
media_image12.png
Greyscale
, which all have different variables coming off different positions. Thus, a full search cannot be made of the claim.
Claim 55 should be amended to include a structural formula under which the species can be searched or depend from a generic claim to include all the claimed species.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 59 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 59 recites the broad recitation “solution”, and the claim also recites “liquid solution” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 27 and 41 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 27 recites that condition (i)
PNG
media_image13.png
54
610
media_image13.png
Greyscale
. However claim 27 depends on claim 23, which depends on claim 22 which recites the proviso
PNG
media_image14.png
56
638
media_image14.png
Greyscale
. Thus claim 27 falls outside the scope of claims 22 and 23, the claims upon which it depends.
Claim 41 recites compounds such as GMR 054
PNG
media_image15.png
160
338
media_image15.png
Greyscale
and GMR 067, which are not encompassed by claim 22, the claim upon which they depend. Claim 22 does not recite that J can be unsubstituted alkyl.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 22-23, 27 and 41 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 22 recites the proviso “
PNG
media_image16.png
58
728
media_image16.png
Greyscale
” However, Applicant has not provided support as to where within the Specification such an exclusion may be found. MPEP 2173.05(i) states that “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining.")... While silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure." Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 2022 USPQ2d 569 (Fed. Cir. 2022) (quoting Ariad Pharm. Inc. v. Eli Lilly & Co., 589 F.3d 1336, 1351, 94 USPQ2d 1161, 1172).
Applicant has not pointed out where in the Specification it states that at least one of R2 and R4 is not (C1-C6)alkyl substituted with halogen when J is
PNG
media_image17.png
22
496
media_image17.png
Greyscale
MPEP 2163.06, Section I states that “If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).” Within the Specification, compounds of Formula IA, IB, IC, ID, IE, IF, IG or X are described; however, none of these compounds correspond to the full scope of the compounds proviso-ed out of claim 22. One of ordinary skill in the art would not arrive at those particular species in view of all the claimed variables. US PG Pub. US2023/0337677, which corresponds to the instant application, teaches specific embodiments outside of the generic teaching for R2, none of which include (C1-C6)alkyl substituted with halogen (see paragraph [0108]-[0109], p. 9). Ex parte Grasselli, 23 1 USPQ 3 93 states that “Negative limitation was added into the claim which did not appear in the specification as originally filed and therefore introduces new concepts and violates description requirement under 35 USC 112, 1st paragraph.”
Thus, claim 22 and dependent claims 23, 27 and 41 are rejected under 112(a).
Improper Markush Rejection
Claim 55 is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of the compounds of claim 55 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
Claim 55 is drawn to variety of compounds such as
PNG
media_image5.png
118
302
media_image5.png
Greyscale
PNG
media_image6.png
114
302
media_image6.png
Greyscale
PNG
media_image7.png
120
302
media_image7.png
Greyscale
,
PNG
media_image8.png
148
284
media_image8.png
Greyscale
,
PNG
media_image9.png
136
234
media_image9.png
Greyscale
. ,
PNG
media_image10.png
180
224
media_image10.png
Greyscale
PNG
media_image11.png
142
560
media_image11.png
Greyscale
that have all different structural cores (i.e. phenyl, pyridinyl,
PNG
media_image12.png
104
104
media_image12.png
Greyscale
, which all have a variety of variables coming off different positions.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 22-23, 41, 55-57, 59 and 61 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CA Reg. No. 2004271-61-6, entered into STN on 10/03/2016. CA Reg. No. 2004271-61-6 corresponds to compound
PNG
media_image3.png
174
238
media_image3.png
Greyscale
which is compound MTFI-4-4B of claim 41 and claim 55 and corresponds to a compound of Formula X, wherein X1 is CR3 wherein R3 is halogen, R2 and R4 are halogen, R1 is H, R10 is H, X2 is C(O), J is CHF2. Regarding the composition of claims 56-57, 59 and 61, comprising the anticipatory compounds and an excipient, the Registry entry for Registry no. 2004271-61-6 discloses a mass solubility of 0 g/L, in unbuffered water at pH 6.452. This teaching of water anticipates the claimed composition, wherein the compounds are present with an excipient (i.e., water), which reads on claim 56. Further since the compound is in water and the solubility measured, this would constitute a solution, which reads on claim 59.
See MPEP 2128: ELECTRONIC PUBLICATIONS AS PRIOR ART Status as a "Printed Publication" An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) Since this date represents the date that each compound entered the CAPlus database on STN, this represents the date that each compound was made accessible to the public.
In regards to claims 57, 61 and 65, according to MPEP 2111.02, Section II, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”).
In re Tuominen (213 USPQ 89) states the following:
The composition is the same no matter what its intended use is, and consequently, the appealed claims are not seen to distinguish over the art which also discloses a composition of the recited active ingredient. We will not construe the instant claims to be limited to compositions also containing other ingredients usually utilized in sunscreening compositions merely by the fact that the introductory clause of the claims recites a different contemplated utility for the claimed composition not taught by the art. Rather, as done by the Examiner, we interpret the claims to be drawn to a composition of the active ingredients, per se, and, as such, under the rationale of Pearson, they fail to distinguish over the references.
Thus since claims 57, 61 and 65 recite the intended use of a composition, claims 57, 61 and 65 are also rejected.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 22-23, 27, 41, 55-57, 59, 61 and 65 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsikolia et al (see Chemistry & Biodiversity, 2019, Vol. 16, Issue 5, p .1-11). Tsikolia et al teaches compound
PNG
media_image4.png
196
154
media_image4.png
Greyscale
wherein R is CF2CF3 (see Table 1, compound 8h, p. 4) -
PNG
media_image18.png
28
786
media_image18.png
Greyscale
as having insect repellent or pesticidal activity. This compound corresponds to a compound of claim 27(i) and MTFI-4-2D of claim 41 except that the compound of Tsikolia et al has J is CF2CF3 rather than (CF2)2CF3. However, varying the length of the alkyl chain from 2 to 3 carbon atoms would lead to compounds that are considered homologues. A homologue is defined as a series of compounds differing from each other by a repeating unit, such as a methylene group as seen in the instant case. However, it has long been established that this type of difference --- varying the size of a chain --- constitutes a form of homology, and is a fact of very close structural similarity, rendering the homolog obvious. Adjacent homologues are considered to be obvious absent unexpected results. See In re Henze, 85 USPQ 261, 263Similar is In re Schechter and LaForge, 98 USPQ 144, 150, which states “a novel useful chemical compound which is homologous or isomeric with compounds of the prior art is unpatentable unless it possesses some unobvious or unexpected beneficial property not possessed by the prior art compounds.” Note also In re Deuel 34 USPQ2d 1210, 1214 which states, “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.”
In the absence of unexpected results, one skilled in the art would expect that the instant claims which are directed to compounds that are homologues to the compounds of Tsikolia et al is prima facie. One skilled in the art would be motivated to synthesize structurally similar compounds with the expectation that they would have similar properties and utilities. The explicit teaching of Tsikolia et al together with the enabled examples would have motivated one skilled in the art to synthesize compounds with the expectation that they would have similar utility as pesticidal properties.
Further the compound is taught in a liquid broth (see p.4 under Microdilution broth assay), which is a solution and reads on claims 56 and 58.
In regards to claims 57, 61 and 65, according to MPEP 2111.02, Section II, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”).
In re Tuominen (213 USPQ 89) states the following:
The composition is the same no matter what its intended use is, and consequently, the appealed claims are not seen to distinguish over the art which also discloses a composition of the recited active ingredient. We will not construe the instant claims to be limited to compositions also containing other ingredients usually utilized in sunscreening compositions merely by the fact that the introductory clause of the claims recites a different contemplated utility for the claimed composition not taught by the art. Rather, as done by the Examiner, we interpret the claims to be drawn to a composition of the active ingredients, per se, and, as such, under the rationale of Pearson, they fail to distinguish over the references.
Thus since claims 57, 61 and 65 recite the intended use of a composition, claims 57, 61 and 65 are also rejected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAREN CHENG whose telephone number is (703)756-4699. The examiner can normally be reached M-F, 9AM-6PM PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan can be reached at 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KAREN CHENG/Primary Examiner, Art Unit 1623
/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621
Prosecution Insights