DETAILED ACTION
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 .
Claims 1-12 and 21-26 are 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.
The phrase “the points of the plurality of teeth defining a generally cylindrical shape” (cl 1:8-9) is indefinite because it is unclear whether each point has a generally cylindrical shape, or the points of the plurality of teeth collectively define a generally cylindrical shape.
The phrase “said mixture comprising…acetate copolymer” (cl 1:11-13) is indefinite because it is grammatically incorrect and the scope and breadth of the phrase are unascertainable. Semicolons should be used.
The phrase “the points of the plurality of teeth defining a generally cylindrical shape” (cl 21:7-9) is indefinite because it is unclear whether each point has a generally cylindrical shape, or the points of the plurality of teeth collectively define a generally cylindrical shape.
The phrase “said mixture comprising…acetate copolymer” (cl 21:10-12) is indefinite because it is grammatically incorrect and the scope and breadth of the phrase are unascertainable. Semicolons should be used.
Corrections are required.
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 1-12 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
By going through the wands factors analysis, at least the following factors indicate that there is a lack of enablement:
(C) The State of the prior art:
No prior art appears to disclose this limitation. In fact, prior arts disclose the opposite. For example, US 2007/0056939 discloses that cooling a melt actually prevents migrations of particles ([0062]). This would make sense since the hardening of a melt would make it more difficult for particles to move.
(D) The level of one of ordinary skill in the art and (E) the level of predictability in the art. It does not appear that one of ordinary skill in the art would understand how to make or use this invention since it is counter-intuitive that particles would migrate during the hardening of a melt. Further, since it is a mixture, it would appear that hardening of the melt would just ensure that the glass particles remain in its mixture in a dispersed state.
(F) The amount of direction provided by the inventor and (G) existence of working examples.
There is no direction provided by the inventor as to how to achieve this migration of glass particles during hardening. The specification only mentions that it migrates while providing no further step or clarification on how this is achieved.
Applicant’s arguments with respect to claim(s) 1-12 and 21-26 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 EDMUND H LEE whose telephone number is (571)272-1204. The examiner can normally be reached M-Th 9AM-4PM.
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EHL
/EDMUND H LEE/Primary Examiner, Art Unit 1744