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 .
DETAILED ACTION
Claims 1, 3-4, 6, 15-21 of T. Felder, US 17/910,883 (09/12/2022) are pending. Claims 19-20 are withdrawn as not read on the elected species. Claims 1, 3-4, 6, 15-18 and 21 are under examination on the merits and are rejected.
Election/Restrictions
Applicant previously elected Group (I) (claims 1-9 and 15), with traverse, in the Reply filed on 07/21/2025. Claims 10-14 drawn to non-elected Groups (II) and (III) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Applicant canceled claims 2, 5, 7-14 and added news claims 16-21 in the reply filed on 12/08/2025, which results now claims 1, 3-4, 6, 15-21 drawn to the elected Group. The Restriction Requirement is made as Final.
Pursuant to the election of species requirement, Applicant elected, without traverse, the compound with the following formula in working Example 7 in the Reply filed on 07/21/2025 for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
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No claim in the elected Group (I) read on the elected species. Examiner conducted a phone interview with Applicant on 07/30/2025, Applicant elected a new species which is the chemical formula in the second line of the paragraph [0211] at page 67 of the specification for prosecution on the merits.
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Now claims 1,3,4,6 and 15-18, 21 read on the elected species. The elected species was searched and determined to be free of the arts record. The search/examination was extended other species recited in the 103 rejections below. MPEP § 803.02 (III)(C)(2). The provisional Species Election Requirement is in Effect. Claims 19-20 are provisionally withdrawn from consideration pursuant to 37 CFR 1.142(b) as not read on the elected species. See, MPEP § 803.02.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record
of what applicant intends to claim. See, MPEP § 2111. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning
is inconsistent with the specification. See MPEP § 2111.01. It is also appropriate to look
to how the claim term is used in the prior art, which includes prior art patents, published
applications, trade publications, and dictionaries. MPEP § 2111.01 (III).
Interpretation of the Claim Term “Silica particles”
The specification provides definition for the claim term “silica particles” as follows:
According to the invention, the term "silica particles" refers to particles of silicon dioxide, including but not limited to particles of colloidal silica or particles of fumed silica.
Specification at page 3, [0007], line 22-23, emphasis added. The claim term “silica particles” is interpreted, consistently with the specification, as particles of silicon dioxide (i.e., SiO2).
Interpretation of the Transitional Phrases “Functionalized”
Claim 1 recites the term “functionalized” in the following context:
Claim 1 Silica particles functionalized with one or more silanes of the formula . . .
The specification portion most relevant to the meaning of “functionalized” is the following:
[0009] According to the invention, the term "functionalized" indicates that the silica particles are modified by contacting them with one or more functionalized silanes, resulting in an alteration of the particles' properties due to the presence of other functional groups on the particles’ surface relative to the particles' properties before the functionalization. Typically, the functionalization of silica particles by silanes takes place by formation of siloxane units via a condensation reaction of a silane or organosilyl ether and one or more OH groups present on the surface of the silica particle.
Specification at page 4, [0009], line 13-18 (emphasis added). Thus, in the context of claim 1, the specification defines “functionalized” as requiring contacting between a functionalized silane and the silica particle AND resulting in an alteration of the particles' properties relative to the uncontacted particles' properties; that is, a chemical bond between the silica particle and functionalized silane is not required. As such, the claim 1 term “functionalized” is broadly and reasonably interpreted consistently with the specification as met by contacting a functionalized silane with the silica particle if any property of the particle is changed, whether or not a chemical bond is formed.
A further important issue is whether Applicant intends “functionalized” as open or closed language. MPEP § 2111.03. That is, does Applicant intend that “functionalized” permits additional chemical groups other than formula (1) and/or formula (2) to be contacted with the silica particles (i.e., open language, similar to comprising) or does Applicant intend closed language, that is, only formula (1) and/or formula (2) may be contacted with the silica particles and no other chemical groups (similar to the transitional phrase “consisting of”). MPEP § 2111.03.
As noted in the MPEP transitional phrases other than the typically used “comprising”, “consisting of” and “consisting essentially of” (such as the transitional phrase "having") must be interpreted in light of the specification to determine whether open or closed claim language is intended. MPEP 2111.03(IV).
Consistent with the Specification, the transitional phrases “functionalized” is broadly and reasonably interpreted as a synonym of “comprising”, "including," "containing," or "characterized by," which is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. MPEP2111.03(I). That is the claimed silica particles can comprises other groups in addition to the claimed formula (1) and/or formula (2).
Withdrawal Claims Rejections- 35 U.S.C. 112(b) - Improper Preferences
Rejection of claims 1, 3-4,6 and 15 under 35 U.S.C. 112(b) as indefinite for improper preference is withdrawn because the claims have been amended by deletion of the preference languages.
Withdrawal Claim Rejections - 35 USC § 102
Rejection of claims 1,3-4, 6 and 15 under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by G. Hoffmüller, et al, US20180371248A1 (2018)(“Hoffmüller) with an evidence from G. A. Patel, et al, EP1087001A2 (2001)(“Patel”) is withdrawn because the moiety F in the formula (2) of the instant claim 1 cannot be substituted by OH; which cannot be met by the Hoffmüller Example 6 compound.
Maintained Claim Rejections 35 U.S.C. 112(a) – Written Description
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.
For an originally filed claim, 35 U.S.C. 112(a) requires that the specification shall contain a written description of the invention demonstrate that the inventor was in possession of the invention that is claimed.1 MPEP § 2163(I); MPEP § 2163(II)(A)(3)(a). Possession may be shown by disclosure of drawings or structural chemical formulas that show that the invention was complete. MPEP § 2163(I).
Thus, the written description requirement in an originally filed claim may be satisfied through disclosure of function and minimal structure when there is a well-established correlation between structure and function. MPEP § 2163(II)(A)(3)(a)(i). In contrast, without such a correlation, the capability to recognize or understand the structure from the mere recitation of function and minimal structure is highly unlikely. MPEP § 2163(II)(A)(3)(a)(i) (citing Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406). Accordingly, a “sufficient description . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010). For genus claims using functional language, the written description "must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus." Ariad, 598 F.3d at 1349.
The § 112(a) Written Description Rejection
Maintenance of rejection of Claim 4 under 35 U.S.C. 112(a) as failing to comply with the written description requirement because the application as filed does not disclose either sufficient species of species of H-L-F (where L-F is a fragment of formula (1) and/or formula (2)) that can perform the claim 4 function of:
4. The silica particles according to claim1 wherein the one or more silanes of the formula (1) and/or (2) are exclusively selected from hydrophobic silanes (i.e. from silanes wherein the logP value of the partition coefficient Poct/wat of the compound H-L-F comprising the L-F-groups of the silane in a 50/50 mixture of water and octanol is equal or above 0.5).
or provide a correlation between the structure of silanes of the formula (1) and/or (2) with the hydrophobicity of the silane (or logP value of the H-L-F used to prepare the silane) that achieve the above functional results, such that one of skill can recognize or envision (per claim 4) which species of H-L-F (where L-F is a fragment of formula (1) and/or formula (2)) meet the hydrophobicity as claimed.
Breadth of the Claims
The claim is directed to the art of silica particles with one or more silanes which are exclusively selected from hydrophobic silanes (i.e. from silanes wherein the logP value of the partition coefficient Poct/wat of the compound H-L-F comprising the L-F-groups of the silane in a 50/50 mixture of water and octanol is equal or above 0.5).
The claim breadth is vast because each the number of the claimed R1, R2 and A in the claimed formulas (1) and (2) are unlimited, further, the claimed silica particle can have any size. The written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. MPEP § 2163(II)(A)(3)(a)(ii) (citing Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021)). The vast claim breadth, particularly with respect to the claimed R1, R2 and A, each of which encompasses an essentially uncountable number of species.
State and Predictability of The Art
It is noted that what is conventional or well known to one of ordinary skill in the art need not be disclosed in the specification in detail. MPEP § (II)(A)(3)(a). Thus, the state of and predictability in the art is a relevant consideration in determining compliance with § 112(a), written description. MPEP § (II)(A)(3)(a) (citing Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1085 (Fed. Cir. 2005) ("The ‘written description’ requirement must be applied in the context of the particular invention and the state of the knowledge…. As each field evolves, the balance also evolves between what is known and what is added by each inventive contribution”).
This art of the hydrophobicity of silane is unpredictable. Arkles teaches that Dipodal silanes are silanes employed in surface modification that possess two silicon atoms capable of bonding to surfaces through oxane bonds. See B. Arkles, "Hydrophobicity, hydrophilicity and silane surface modification." 215 Gelest Inc 547-1015 (2011)(“Arkles”) at page 13, left col. Dipodal Silanes, line 1-3. Arkles teaches that dipodal silane SIB1824.0 is a hydrophobic silane, while dipodal silane SIB1833.0 which has a similar structure as that of silane of SIB1824.0 is a hydrophilic silane.
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Arkles at page 13, right col. Hydrophobic Dipodal Silanes and Hydrophobic Dipodal Silane.
The teaching from Arkles indicates that the hydrophobicity of silane used for surface modification is unpredictable, which can be further exampled by G. Hoffmüller, et al, US20180371248A1 (2018) (“Hoffmüller).
And as mentioned in the previous Office action that Hoffmüller teaches a silane in Example 5, which meets the structural requirement of the formula (2) in the instant claim 1 as indicated below:
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however, one ordinary skill does not know the LogP values of the compound of
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(H-L-F) which comprises the
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(L-F) group of the Hoffmüller silane in Example 5 because Hoffmüller does not disclose it.
Supporting Disclosure in the Specification
The specification only discloses 4 species of the claimed silane. Specification at page 65-67, Examples 1-3(starting material) and Example 7. However, the specification does not disclose any hydrophobicity/hydrophilicity of the disclosed 4 species of the claimed silane, nor the logP value of the compound H-L-F comprising the L-F of the disclosed silanes.
Claim 4 Lacks Adequate Written Description Support
One of skill in the art would not recognize that Applicant was in possession of claim 4 because the application as filed does not disclose either sufficient species of species of H-L-F (where L-F is a fragment of formula (1) and/or formula (2))that can perform the claim 4 function of:
claim 4 . . . the logP value of the partition coefficient Poct/wat of the compound H-L-F comprising the L-F-groups of the silane in a 50/50 mixture of water and octanol is equal or above 0.5.
or correlation between the structure of H-L-F with the hydrophobicity of the silane (or logP value of the H-L-F comprising the L-F in the silane), such that one of skill can recognize or envision (per claim 4) which species of H-L-F can perform this claimed function.
The specification does not disclose a representative number of species. In this regard, the specification teaches 4 species of the claimed silane, however, neither the hydrophobicity/ hydrophilicity of the disclosed 4 species of the silane, nor the logP value of H-L-F comprising the L-F group in the disclosed silane is disclosed in the specification. Thus, the specification clearly does not disclose a representative number of species within the large genus of H-L-F. A "representative number of species" means that the species which are adequately described are representative of the entire genus. MPEP § 2163(II)(A)(3)(a)(ii).
Further still, the prior art does not supplement the instant lack of disclosure regarding the structure function relationship between the claimed silane and its hydrophobicity such that the claimed functional recitations can be realized. Rather, the art teaches that the hydrophobicity of silane used for surface modification is unpredictable, for example, Hoffmüller teaches a silane in Example 5 which meets the structural requirement of the formula (2) in the instant claim 1, however, one ordinary skill does not know the LogP values of the compound of
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(H-L-F) which comprises the
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(L-F) group of the Hoffmüller silane in Example 5 because Hoffmüller does not disclose them.
Applicant’s Argument
Applicant first argues on the ground that:
The Specification provides a definition for a hydrophobic silane and a method to calculate whether the silane is hydrophobic. [0079] of the Specification. The Specification provides preferred ranges of hydrophobicity. [0080] of the Specification. The Specification also provides preferred hydrophobic functional groups. [0081]. A person of skill in the art would therefore understand, based on the Specification, the hydrophobicity of the silane.
Remarks at page 10, Claim Rejections under 35 U.S.C. 112(a), page 10, paragraph 1.
These arguments have been fully considered but not persuasive because one ordinary skill does not know the solubility of a specific silane in octanol and/or water; therefore, one ordinary skill cannot recognize or envision which species of the claimed silane has a logP value of equal or above 0.5.
Applicant further argues on the ground that “person of skill in the art is generally aware of which functional groups are hydrophobic and hydrophilic”; and “a person of skill in the art would be aware of "Octanol-Water Partition Coefficients of Simple Organic Compounds”. Remarks at page 10, Claim Rejections under 35 U.S.C. 112(a), page 10, paragraph 2 to page 11.
This argument is not persuasive because as mentioned in the previous Office action that Hoffmüller teaches a silane in Example 5 which meets the structural requirement of the formula (2) in the instant claim 1, however, one ordinary skill does NOT know the LogP values of the compound of
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(H-L-F) which comprises the
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(L-F) group of the Hoffmüller silane in Example 5 because it is not disclosed.
Maintained Claim Rejections -35 U.S.C. 112(b) -Unclear Claim Term
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Rejection of claims 1, 3-4,6 and 15 under 35 U.S.C. 112(b) as indefinite is maintained for the same reason as given in the previous Office action that is the claim terms “non-hydrolyzable residues” and “hydrolyzable residues” are not clear. The specification provides the following discussions:
[0011] According to the invention, the group R1 is independently selected from non- hydrolyzable residues, preferably hydrocarbyl groups, more preferably alkyl groups, most preferably R1 is methyl. Herein, the term "non-hydrolysable" indicates that the group cannot be easily cleaved by the addition of water, hydroxide anions or, in full analogy thereto, by addition of an alcohol or alkoxide anions, in particular under acidic or basic conditions. The term "non-hydrolysable" indicates that the groups are preferably bonded to the silicon atom by a C-Si bond, and accordingly the non-hydrolyzable group is preferably an organyl group.
Specification at pages 4-5, [0011], emphasis added.
[0016] Herein, the term "hydrolysable" indicates that the group can be easily cleaved by the addition of water, hydroxide anions or by the addition of an alcohol or alkoxide anions, in case of water or alcohols in particular under acidic or basic conditions. The term "hydrolysable" shall indicate that the groups are not bonded to the silicon atom by a C-Si bond, but by a Si-X bond, wherein X is Cl, Br or I, an Si-O bond, as is the case when R2 is selected from hydroxy, hydrocarbylcarbonyloxy and hydrocarbyloxy groups, an Si-N bond, an Si-S bond or an Si-H bond.
Specification at pages 5, [0016], emphasis added.
The term “easily cleaved” is a relative term which renders the claim indefinite. The term “easily cleaved” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention because one group can be easily cleaved at one condition while cannot be cleaved at another condition.
Applicant’ Argument
Applicant argues on the ground that:
The Office Action rejects claims 1, 3-4, 6, and 15 under 35 U.S.C. 112(b) as allegedly indefinite. Specifically, the Office Action alleges that the claim terms "non-hydrolyzable residues" and "hydrolyzable residues" are unclear. The Specification states that "non-hydrolyzable residues" cannot be easily cleaved by the addition of water, hydroxide anions, an alcohol, or alkoxide anions [0011]; while "hydrolyzable residues" can be easily cleaved by the addition of water, hydroxide anions, an alcohol, or alkoxide anions [0016]. A person of skill in the art would understand residues that can or cannot be easily cleaved by water or hydroxide anions and thus these claim terms are clear. Therefore, the rejection of claims 1, 3- 4, 6, and 15 under 35 U.S.C. 112(b) as allegedly indefinite is overcome and withdrawal thereof is respectfully requested.
Remarks at page 12, paragraph 2.
This argument is not persuasive. As mentioned in the previous Office action that the term “easily cleaved” is a relative term, the specification does not provide a standard for ascertaining the requisite “easily cleaved” degree. Given one group can be easily cleaved at one condition while it cannot be cleaved at another condition, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 103
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.
Claims 1,3-4, 6 and 15-18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over G. Hoffmüller, et al, US20180371248A1 (2018)(“Hoffmüller) with an evidence from G. A. Patel, et al, EP1087001A2 (2001)(“Patel”).
G. Hoffmüller, et al, US20180371248A1 (2018)(“Hoffmüller) with an evidence from G. A. Patel, et al, EP1087001A2 (2001)(“Patel”)
Hoffmüller teaches asymmetrically substituted di- and pentasiloxane derivatives and oligomers thereof suitable for coating of organic and inorganic surfaces , organic and inorganic particles, and/or which can enhance compatibilization of materials or separated liquid phases. Hoffmüller at page 1, [0002], lines 4-9., emphasis added.
Hoffmüller teaches working examples of the asymmetrically substituted di- and pentasiloxane derivatives such as the butyl and alkoxysilyl functionalized pentasiloxane in working Example 3 and the alkoxysilyl and polyether functionalized pentasiloxane in working Example 6, which have chemical structures as indicated below.
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Hoffmüller at page 19, Example 3, [0466] and Example 6, [0476].
Therefore, Hoffmüller fairly teaches the compounds of Examples 3 and 6 are alternative.
The Hoffmüller functionalized pentasiloxane Example 3 meets the limitation of the formula (2) in the instant claim 1 as indicated below, wherein x is 0.
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Hoffmüller also teaches working examples for antifogging coating composition with the asymmetrically substituted di– and pentasiloxane derivatives, such as Examples 17-19.
Regarding to the Examples 17-19, Hoffmüller teaches that:
[0508] The production of the varnish was done following the procedure described for Example 1 in EP1087001 except that the kind and amount of material was changed. Instead of using pure methyltrimethoxysilane (B1), mixtures of the latter one with the pentasiloxane described in example 6 (A1) and the polyhydroxy-alkoxysilane (C1) described below were used.
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Hoffmüller at page 21-22, Examples 17-19, [0508], emphasis added; and Table 2.
The evidence from EP1087001 indicates the procedure of the Example 1 in EP1087001 as follows:
[0025] In a glass bottle equipped with a stirrer, 406 grams (g) of methyltrimethoxysilane was mixed with 2.5 g of acetic acid. In a separate vessel, 251 g of a silica sol (LUDOX AS2, DuPont Co.) was mixed with 83 g of deionized water to reduce the silica level to 30 wt.%. The diluted silica sol was then added, with stirring, to the acidified methyltrimethoxysilane and stirring was continued for 4 hours at room temperature. An additional 25.2 g of acetic acid (1.8% of final reaction mixture) was added and stirring was continued for 3 hours to effect hydrolysis-condensation.
EP1087001 at page 4, Examples 1-11, emphasis added. Thus, EP1087001 clearly teaches that there is a condensation between the silane and silica particles, and the silica particles are functionalized. Therefore, while Hoffmüller does not directly point out, the silica particles (colloidal silica) in Hoffmüller composition examples such as Example 18 is functionalized with one or more silane A13.
Difference between Hoffmüller and the Claims
Hoffmüller Example 18 functionalized silica particles differs the instant claim 1 only in that the Hoffmüller Example 6 pentasiloxane (A1) does not meet the structural requirement of the formula (1) or formula (2) in the instant claim 1; however, Hoffmüller teaches Example 3 pentasiloxane that is an alternative of the Hoffmüller Example 6 pentasiloxane (A1) and it meets the structural requirement of the formula (2) in the instant claim 1as indicated above.
Obviousness Rational of the Claims
Claim 1 is obvious because one ordinary skill seeking antifogging coating composition is motivated to modify Hoffmüller Example 18 by replacing the Hoffmüller Example 6 pentasiloxane with the Hoffmüller Example 3 pentasiloxane, thus to arrive functionalized silica particles meeting each and every limitation of claim 1, therefore, claim 1 is obvious.
Claim 3 is obvious because as indicated above that F in the Hoffmüller Example 3 pentasiloxane is -CH2CH3 that is an alkyl group.
Claim 4 is obvious, as indicated above that the L-F group in the Hoffmüller Example 3 pentasiloxane is -CH2CH2CH2CH3, PubChem indicates that the LogP value of butane is 2.89. See PubChem-Butane.
Claim 6 is obvious because in the proposed composition the concentration of colloidal silica is 4%, while the concertation of the Hoffmüller Example 3 pentasiloxane is 11%, there is a reasonable anticipation that at least some colloidal silica particle is functionalized by two or more the pentasiloxane 3.
Claim 15 is obvious because as discussed above that the concentration of the colloidal silica in the proposed coating composition is 4% ; and the concertation of the Hoffmüller Example 3 pentasiloxane in the proposed coating composition is 11%, there is a reasonable expectation that all the colloidal silica in the proposed coating composition is bonded by the Hoffmüller Example 3 pentasiloxane and have a concentration about 15% by weight3.
Claims 16-18 are obvious because as indicated above that in the Hoffmüller Example 3 pentasiloxane:
R1 is methyl,
R2 is OCH3, and
L is -CH2-CH2-.
Claim 21 is obvious because one ordinary skill is further motivated to modify the proposed composition by adjusting the amount of the colloidal silica and the Hoffmüller Example 3 pentasiloxane to arrive at the claimed composition because EP1087001 teaches that solids content (organoalkoxysilane, silica and other normally solid constituents) in a composition such as coating composition is typically in the range of about 25-45% by weight. See EP1087001 at page 4, [0019].
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday.
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, Scarlett Goon can be reached at (571)2705241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, a question as to whether a specification provides an adequate written description may arise in the context of an original claim. MPEP § 2163.03 (V) (citing In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976)). An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. MPEP § 2163.03 (V) (citing Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) ("[e]ven if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed”).
2 Colloidal silica
3 This is a procedural burden shifting. The requirement that the prior art necessarily teaches the alleged inherent (functional) element still remains. MPEP § 2112(IV). However, the burden is shifted to Applicant to demonstrate the alleged inherent element is not necessarily present in the cited prior art. Stated differently, when the examiner "has reason to believe" that the prior art reference inherently teaches the functional limitation, the burden shifts to the patent applicant to show that the limitation cannot be met by the prior art reference. MPEP 2112(V), see also, In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Chudik, 674 F. App'x 1011, 1012 (Fed. Cir. 2017) (both citing In re Swinehart, 439 F.2d 210, 212, 58 C.C.P.A. 1027 (C.C.P.A. 1971)).
Prosecution Insights