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 .
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 9-15 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.
Regarding claim 9: Claim 9 recites the limitation "per mole of 4-toluidine used" in the last two lines. There is insufficient antecedent basis for this limitation in the claim. The process requires reacting a specific set of compounds of formula (I) with 1.0 to 4.0 mol of propylene oxide. The compound 4-toluidine is not mentioned in claim 9 in the process and therefore lacks antecedent basis. It is suggested to change the limitation to be in terms of the compound of formula (I) claimed or to incorporate the limitations of claim 12 which introduce the 4-toluidine into the claimed process.
Regarding claim 11: The Markush group language should be “selected from the group consisting of A, B, and C” in order to establish A, B and C are alternatives to each other and the group from which they are selected is closed to other unnamed components. In claim 11, the language used is “selected from the group consisting or”, which may be merely a typographical error, but the “or” should be changed to “of”. Further, there is an “and” before the list is over (alkali metal and alkaline earth metal hydroxides) which makes what the list of alternatives is unclear. It is suggested to change the first two items of the list to “alkali metal hydroxides, alkaline earth metal hydroxides,”. Also, the list ends in “or” instead of “and”, which is unclear if the Markush group is closed to other unnamed components. See MPEP 2117.
The parentheses in claim 11, last line render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses is an example and not further limiting since this is not the only compound that reads on “the compound of the formula (I) used in which R1 is hydrogen or methyl, but where the R1 radicals on directly adjacent carbon atoms do not both represent hydrogen and do not both represent methyl, and in which m and n are the integer 1” since the position of the R1 methyl groups could be reversed. Appropriate correction is required.
Regarding claim 12: The parentheses in claim 12, line 4 render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses is an example and not further limiting since this is not the only compound that reads on “the compound of the formula (I) used in which R1 is hydrogen or methyl, but where the R1 radicals on directly adjacent carbon atoms do not both represent hydrogen and do not both represent methyl, and in which m and n are the integer 1” since the position of the R1 methyl groups could be reversed. Appropriate correction is required.
Regarding claim 14: Claim 14 recites the limitation "the 4-toluidine" in the second line. There is insufficient antecedent basis for this limitation in the claim. The process of claim 9, from which claim 14 depends, requires reacting a specific set of compounds of formula (I) with 1.0 to 4.0 mol of propylene oxide. The compound 4-toluidine is not mentioned in claim 9 in the process and therefore lacks antecedent basis. It is suggested to change the limitation to be in terms of the compound of formula (I) claimed or to incorporate the limitations of claim 12 which introduce the 4-toluidine into the claimed process.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 15 is rejected under 35 U.S.C. 101 and 35 U.S.C. 112(b) for attempting to claim a process without setting forth any active, positive steps involved in the process. Further, “use” claims do not purport to claim a process, machine, manufacture or composition of matter also do not comply with 35 U.S.C. 101 because it is not among the categories of patentable inventions. See MPEP 2173.05 (q).
Allowable Subject Matter
Claims 1-8 and 16 are allowed.
Claims 9-14 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Rauchschwalbe et al. (US 2013/0116395) is the closest prior art, and teaches a mixture of compounds having the general formula (I) claimed. However, the reference does not teach the amount of compounds in which the sum total of m and n is the integer 2, or the amount of compounds in which the sum total of m and n is at least the integer 6. Further, these limitations cannot be said to be latent properties since in example 1 of Rauchschwalbe et al. there is 50.1 % of N,N-bis(hydroxyethyl)-4-toluidine, which is analogous to m + n = 2, and is outside the claimed range. Before the effective filing date of the claimed invention a person having ordinary skill in the art would not have found the claimed invention obvious from the closest prior art.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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