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 .
Rejections
Claim Rejections - 35 USC § 101
1. 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.
2. Claims 116-127 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because “utilize” is not a statutory class of invention. See MPEP 2173.05(q) "Use" Claims [R-10.2019], “"Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 "). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: "The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid."” and
“I. A "USE" CLAIM MAY BE REJECTED UNDER 35 U.S.C 101 AND/OR 112
It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections. For failure to recite a claim within one of the statutory classes under 35 U.S.C. 101, the appropriate form paragraph is 7.05.01. For indefiniteness under 35 U.S.C. 112(b), the appropriate form paragraph is 7.34.01.”
“Utilizing” is synonymous with “using”. Therefore, the above rationales apply equally to “utilizing”.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 109-112, 114-119, and 121-128 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the disclosed substituents, does not reasonably provide enablement for all of the substituents encompassed by the instantly claimed “substituted”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
A. The instant claims 109 and 116 and the claims which depend therefrom recite “substituted” without specifying the substituents. Therefore, the claims encompass all possible substituents. The instantly claimed “substituted” reads on an infinite number of compounds resulting from the potentially infinite number of substitutions which can be performed on the recited compounds. In re Wands has 8 criteria, (MPEP 2164.01(a)), as shown below.
(A)The breadth of the claims;
(B)The nature of the invention;
(C)The state of the prior art;
(D)The level of one of ordinary skill;
(E)The level of predictability in the art;
(F)The amount of direction provided by the inventor;
(G)The existence of working examples; and
(H)The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
It is noted that the instant claims read on all potential substitutions of the recited compounds which encompasses an infinite number of compounds (Wands factors A and B). The specification does not describe how to make all such substituents, how to add them to the claimed compounds, nor how to select those substituents from the infinite list thereof which will function as required in the instant invention (Wands factors B, F, G). It would require an infinite amount of experimentation to determine how to make all of the substituents encompassed by the instant claims and another infinite amount of experimentation to determine which of these substituted compounds would function in the instantly claimed invention as required (Wands factors B and H). Chemistry is an unpredictable art (Wands factors B and E). The ordinary skilled artisan has not imagined nor figured out how to make all of the substitutions encompassed by the instant claim of “substituted” yet (Wands factors B, C, D, E, F, G, and H). The enabling disclosure is not commensurate with the full scope of the claimed “substituted”.
See Sitrick v Dreamworks, LLC (Fed Cir, 2007-1174, 2/1/2008), particularly
“Before MICHEL, Chief Judge, RADER and MOORE, Circuit Judges.
MOORE, Circuit Judge.
112(1) Enablement - The enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation
We review the grant of summary judgment de novo. LiebeI-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1377 (Fed. Cir. 2007). Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). Whether a claim satisfies the enablement requirement of 35 U.S.C. § 112, ¶ 1 is a question of law, reviewed de novo, based on underlying facts, which are reviewed for clear error. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003). The evidentiary burden to show facts supporting a conclusion of invalidity is one of clear and convincing evidence because a patent is presumed valid. Id. The “enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.” Id. at 1244.
112(1) Enablement - The full scope of the claimed invention must be enabled.
A patentee who chooses broad claim language must make sure the broad claims are fully enabled.
The full scope of the claimed invention must be enabled. See Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007). The rationale for this statutory requirement is straightforward. Enabling the full scope of each claim is “part of the quid pro quo of the patent bargain.” AK Steel, 344 F.3d at 1244. A patentee who chooses broad claim language must make sure the broad claims are fully enabled. “The scope of the claims must be less than or equal to the scope of the enablement” to “ensure[] that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.” Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999).”
5. Claims 113 and 120 are objected to as depending from the claims rejected in paragraph 2 above. The instant claims 113 and 120 recite specific molecules of the claimed alkali-metal organosiliconate which do not recite “substituted”. These claims therefore do not contain the matter which is the subject of the rejection of paragraph 2 above.
6. 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.
7. Claim 116-128 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.
A. The instant claims 116-127 recites a method comprising utilizing a water-based inkjet ink formulation. “[U]tilizing” is not a definite process step. It is unclear what definite process step is required by “utilizing”. The instant claims therefore do not 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 scope of the claims is therefore not clear.
See MPEP 2173.05(q) "Use" Claims [R-10.2019]
Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
"Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 "). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: "The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid."
Although a claim should be interpreted in light of the specification disclosure, it is generally considered improper to read limitations contained in the specification into the claims. See In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969) and In re Winkhaus, 527 F.2d 637, 188 USPQ 129 (CCPA 1975), which discuss the premise that one cannot rely on the specification to impart limitations to the claim that are not recited in the claim.
I. A "USE" CLAIM MAY BE REJECTED UNDER 35 U.S.C 101 AND/OR 112
It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections. For failure to recite a claim within one of the statutory classes under 35 U.S.C. 101, the appropriate form paragraph is 7.05.01. For indefiniteness under 35 U.S.C. 112(b), the appropriate form paragraph is 7.34.01.
“Utilizing” is synonymous with “using”. Therefore, the above rationales apply equally to “utilizing”.
B. The instant claims 124 and 128 recite “a printing system” and “A printing system”. There is no standard definition of “printing system” in the art. The instant specification does not provide a definition of the instantly claimed printing system. The instant specification, page 35, ninth through eleventh lines are particularly noted. However, these references and other references like them throughout the instant specification do not particularly point out and distinctly claimed what is required by the instantly claimed “printing system”.
It is therefore unclear what is required by the instantly claimed “printing system” other than the claimed water-based inkjet ink formulation. The scope of the claims is therefore not clear.
For examination purposes, the “printing system” will be taken as reading on the water-based inkjet ink formulation according to claim 109 as well as the combination thereof with any printing items, such as paper, printer, and inkjet cartridges.
Claim Rejections - 35 USC § 102
8. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
9. Claims 109-114 and 127-128 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 109679405 Chen, the machine English translation thereof provided by the examiner being referenced below unless otherwise noted.
Regarding claims 109-114 and 128:
Chen discloses water-based inks containing solvent containing water, pigment which is a coloring agent, and methyl sodium silicate, which fall within the scope of the instantly claimed alkali-metal organosiliconate of Formula (I) of the instant claims 109, 111-113. The polyester of Chen is the binder of the instant claim 110.
Chen’s inks do not require inorganic silicate and/or colloidal silica which falls within the scope of the instant claim 114.
See Chen, page 1, line 35 to page 2, line 10 noting the polyester, the water, the solvents, the pigment and the methanesiliconic acid sodium salt, page 3, line 17 to page 4, line 5, noting the methyl sodium silicate, page 5, lines 8-18, noting the water, polyester, solvents, methyl sodium silicate of line 16 and pigment of line 18, page 5, line 19 to page 6, line 6, noting the sodium methyl silicate of line 4 and pigment of line 6. Note also the exemplified water, solvents and polyester, which is necessarily a binder.
Chen does not describe their inks as inkjet inks. Chen’s inks can be jetted by some inkjetting device because they contain the same components as the instantly claimed inks, such as a continuous jetting printer.
The printing system of the instant claim 128 only recites the water-based inkjet ink formulation according to claim 109. The above discussed inkjet ink of Chen therefore falls within the scope of the printing system of the instant claim 128. Additionally, the combination of the above discussed inkjet inks of Chen with the device they are printed with or the substrate they are applied to are also “printing systems” that fall within the scope of the instant claim 128.
Regarding claims 116-121 and 124:
Inkjet printing with the inks of Chen discussed above and placing the above discussed inks of Chen in the inkjet printers necessarily gives the methods of the instant claims 116-121 and 124. The instant claim 124 recites the only two options and is therefore necessarily met by Chen.
Regarding claim 127:
Printing with the above discussed inkjet ink of Chen falls within the scope of the instant claim 127. The instant claim 127 does not specify the printing method and therefore encompasses the printing method implied by “printing ink” of Chen. See Chen, page 1, line 35, noting “printing ink”.
Claim Rejections - 35 USC § 103
10. 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.
11. Claim 115 is rejected under 35 U.S.C. 103 as being unpatentable over CN 109679405 Chen, the machine English translation thereof provided by the examiner being referenced below unless otherwise noted, in view of US Pat. No. 5026755 Kveglis et al.
The discussion of paragraph 9 above is repeated here in its entirety.
Chen does not disclose the white pigment of the instant claim 115 but does exemplify pigment generally, which encompasses white pigments.
Kveglis, column 7, lines 41-42 discloses making white inks by adding titanium dioxide to them. Titanium dioxide is a pigment.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use white pigment as the pigment of Chen because it is encompassed by the general recitation of “pigment” of Chen, white inks containing white pigments are known, as taught by Kveglis, and white ink using the inks of Chen would have been expected to give contrast necessary to see it when printed on a dark substrate.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762