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 .
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.
Claim Objections
Claims 11 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot reference two sets of claims to different features (method and product). See MPEP § 608.01(n). Specifically, §608.1(n) B 3 specifically addresses Claim 11. Accordingly, the claim 11 not been further treated on the merits.
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.
Claims 1-10, 12-17 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.
Claim 11 is not part of this rejection because it is in improper dependent form and not treated on the merits.
Claim 1 recites a range of “polyalkoxylated carbon atoms” for each of the monoalcohols. In light of the as-filed specification, it is entirely unclear how these polyalkoxylated carbon atoms are counted as the straight forward, reasonably suggested method would be X amount of polyalkoxylated carbon atoms per alkoxy group, such as 2 polyethoxylated carbon atoms per ethoxy group. However, Applicant’s as-filed specification does not agree with this interpretation based on the analysis below and, most importantly, Applicant gives no guidance or further definition to guide one of ordinary skill in the art to the correct interpretation of this limitation in light of the specification. Therefore, one of ordinary skill in the art is not apprised of the metes and bounds what or how to count the “polyethoxylated carbon atoms” rendering the claim indefinite.
For simplicity, the analysis is with respect to (b-1)’s 6 to 40 polyalkoxylated carbon atom range. Page 5 lines 5-10 of the as-filed specification states the preferred (b-1) comprises 80 to 500 alkoxy groups. Note this is different than the overall number of alkoxy groups for the overall triurethane compound. (See page 10 lines 1-6, see also Claim 7 which recites this difference).
Using Applicant’s exemplified ethoxy groups for the above analysis this would require (b-1) to have 80*2 – 500*2 = 160 to 1000 polyethoxylated carbon atoms at two polyethoxylated carbon atoms per ethoxy group. This is far outside the claimed range of (b-1) or any of the ranges of polyalkoxylated carbon atoms of any component of the claims.
Further, Applicant’s inventive examples only make the (b-1) or equivalent compound from ethoxylating the monoalcohols and fails to disclose what the resulting number of polyethoxylated carbon atoms in the resulting ethoxylated monoalcohol. (See Inventive Example 1 which uses 140 mols of ethylene oxide to ethoxylate a mixture of dodecanol / tetradecanol)
Therefore, reviewing the examples in order to guide one of ordinary skill in the art to a correct interpretation of the term “polyalkoxylated carbon atoms” in light of the specification also fails as the number of polyalkoxylated carbon atoms in the resulting monoalcohol is unknown. Further, what is reasonably suggested to occur, roughly even amounts of ethoxy units in each monoalcohol (70), still reasonably suggests too many polyalkoxylated carbon atoms relative to the claimed compounds (70 * 2 = 140 polyethoxylated carbon atoms).
For the above reasons, the metes and bounds on the claim limitations of “polyalkoxylated carbon atoms” is considered indefinite.
Claims 2-10 and 12-17 are rejected based on the dependency to Claim 1.
Claim 8 recites “to prepare the triurethane compound Ta” (see b1 section and b4) however, there is no previous reference to the triurethane compound being Ta. This lack of proper antecedent basis in the claims renders the claim indefinite as it is unclear to which triurethane compound is required to have the recited limitation, the triurethane of claim 1 or some other triurethane Ta.
Claim 9 recites “to prepare the triurethane compound Tb” (see c6 section) however, there is no previous reference to the triurethane compound being Tb. This lack of proper antecedent basis in the claims renders the claim indefinite as it is unclear to which triurethane compound is required to have the recited limitation, the triurethane of claim 1 or some other triurethane Tb.
Allowable Subject Matter
Claims 1-10 and 12-17 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Amendments to overcome the §112 above may negate the indication of allowable subject matter.
The closet prior art is Kim (U.S. 4,18,0491) which teaches triurethane made from ethoxylated monoalcohols. See Example 15-27.
The exemplified number of ethoxylated units (55-162) for the ethoxylated dodecanol exemplified appears well outside the claimed range of polyalkoxylated carbon atoms of the claims (6 to 40 carbon atoms vs 110 to 324 carbon atoms exemplified). Further, Kim teaches the molecular weight of the polyether segment is at least 1500 and preferably 3,000 – 20,000 in column 6 lines 15-30. Considering the ethoxy (44 MW) exemplified, this would result in 1500 / 44 = 34 ethoxy units which would be approximately 34 * 2 = 68 polyethoxylated carbon atoms which is outside the range of the polyalkoxylated carbon atoms in the claims. Manipulating Kim to arrive at the claimed invention would require choosing just the right combination of alkoxy units (ethoxy, propoxy, butoxy, etc) and the right molecular weight of the corresponding polyether segment. Therefore, to arrive at the claimed number of polyalkoxylated carbon atoms claimed, if it is even possible especially considering the difficulty in counting these carbons from §112 of record above, would require hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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, Randy Gulakowski can be reached at (571) 272-1302. 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.
/Christopher M Rodd/Primary Examiner, Art Unit 1766