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 1-19 of N. Matsumoto et al., US 18/020,652 (Aug. 11, 2021) are pending. Claim 10 is withdrawn as not reading on the elected species. Claims 11-19, to the non-elected inventions of Groups (II)-(IV) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Claims 1-9 are under examination on the merits and are rejected.
Election/Restrictions
Applicant elected Group (I), claims 1-10, without traverse in the Reply to Restriction Requirement filed on April 6, 2026. Claims 11-19, to the non-elected inventions of Groups (II)-(IV) are withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction/election requirement is made FINAL.
Pursuant to the election of species requirement Applicant elected, without traverse, compound (A512) represented by formula (7) of claim 6.
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for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. In the Reply, Applicant indicates that claims 1-10 of elected Group I read on the elected species. Claim 10, however, does not read on the elected species because claim 10 requires that “Alk represents a cyclic alkyl group having 3 to 25 carbon atoms which may be substituted”, which is not present in the elected species. The elected species was searched and determined to be free of the art of record. The search/examination was further extended to the species cited below in the § 102 rejections below, and claim 1-9 are rejected. MPEP § 803.02 (III)(C)(2). The search was not further extended. The provisional election of species requirement is given effect and claim 10 of elected Group (I) is withdrawn from consideration as not reading on the elected species. MPEP § 803.02(III)(A).
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.
Interpretation of the Claim 1 “proportion of carbon atom number”
The specification does not provide specific guidance regarding the following bolded claim 1 language regarding the proportion of carbon atoms. This bolded language is interpreted below, consistently with the specification, based on its plain meaning. MPEP § 2111.
1. (Original) A metal patterning material, comprising a compound
having, in a molecule: an aromatic ring and/or heteroaromatic ring, a fluorine atom, and at least one tertiary amine,
wherein the aromatic ring is at least one selected from the group consisting of a monocyclic aromatic ring, a linked aromatic ring, and a condensed aromatic ring having from 6 to 15 carbon atoms, and is free of condensed aromatic rings having 16 or more carbon atoms,
wherein a proportion of carbon atom number directly binding with the fluorine atom among a carbon atom number forming the aromatic ring and a carbon atom number forming the heteroaromatic ring is at least 10%,
wherein molecular weight is at least 500 and no more than 3,000, and
wherein a glass transition temperature is 60°C or higher.
It is first noted that the claim 1 “compound” may comprise numerous “aromatic ring and/or heteroaromatic ring” based on the open-ended transitional phrase “comprising”; for example, see formulae recited in dependent claim 3.
This being noted, the plain meaning of the bolded language in claim 1 phrase:
Claim 1 . . . wherein a proportion of carbon atom number directly binding with the fluorine atom among a carbon atom number forming the aromatic ring and a carbon atom number forming the heteroaromatic ring is at least 10% . . . 1
is that it refers back to the single, earlier recited “an aromatic ring and/or heteroaromatic ring” that is substituted with at least one fluorine atom2 and “having3 from 6 to 15 carbon atoms” and “is free of condensed aromatic rings having 16 or more carbon atoms”. MPEP § 2111; MPEP § 2173.05(e).
In view of the forgoing, the above claim 1 phase is broadly and reasonably interpreted, consistently with the specification to be calculated as follows. One of skill selects the most relevant “an aromatic ring and/or heteroaromatic ring” in the reference compound. Then, for this particular, selected “an aromatic ring and/or heteroaromatic ring”, one of skill calculates each of (1) the number of ring carbons; and (2) the number of direct, ring C-F bonds, for insertion into the following formula:
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This is also consistent with claim 11, which recites “wherein a proportion of fluorine atoms relative to carbon atoms in the molecule is at least 50%”.
Rejections 35 U.S.C. 112(b)
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, 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).
Unclear Claim Language “comprising a compound having, in a molecule”
Claims 1 and 2 are rejected pursuant to 35 U.S.C. 112, as indefinite because the scope/meaning of the claim 1 phrase “comprising a compound having, in a molecule”, present in each of these claims, is unclear.
Claim 1 recites “comprising a compound having, in a molecule” in the following context:
1. (Original) A metal patterning material, comprising a compound having, in a molecule: an aromatic ring and/or heteroaromatic ring, a fluorine atom, and at least one tertiary amine,
It is not clear if the “a compound” and the “a molecule” refer to the same entity or whether “a compound” and “a molecule” are two discrete (non-chemically bonded) entities. To state that a compound comprises/has “a molecule” is awkward language. Further, the plain meaning of “compound” and “molecule” are discrete/separate entities. Here, the article “a” implies that they are each a separate entity. On the other hand, “having” implies that the compound comprises the molecule within its overall structure. MPEP § 2173.05(e). Note that dependent claim 3 recites that the claimed “metal patterning material” is represented by Formula (1), (2), or (3).
Rejection of Claim 4 Unclear Claim Language
Claim 4 is rejected pursuant to 35 U.S.C. 112, as indefinite. Claim 4 recites the following bolded language:
4 . . when L1 to L18 are a substituted divalent aromatic hydrocarbon group or substituted divalent heteroaromatic group,
these groups are each independently
a linear, branched or cyclic alkyl group having 1 to 18 carbon atoms which may be substituted by a fluorine atom,
a linear, branched or cyclic alkoxy group having 1 to 18 carbon atoms which may be substituted by a fluorine atom,
an aromatic hydrocarbon group having 6 to 20 carbon atoms which may be substituted by a fluorine atom,
a heteroaromatic group having 3 to 20 carbon atoms which may be substituted by a fluorine atom,
a cyano group,
a fluorine atom, and
a deuterium atom . . .
The indefiniteness issue is that it is not clear what “groups” within the phrase “these groups are each independently” are referenced with respect to antecedent basis. MPEP § 2173.05(e).
The same issue is present in claim 4 with respect to variable X.
It may be that Applicant intended the “these groups” to be substituents. If so, Applicant may overcome this rejection, for example, by amending claim 4 as follows:
4 . . . when L1 to L18 are the substituted divalent aromatic hydrocarbon group or the substituted divalent heteroaromatic group, then these groups are each independently substituted by at least one selected from the group consisting of:
a linear, branched or cyclic alkyl group having 1 to 18 carbon atoms which may be substituted by a fluorine atom,
a linear, branched or cyclic alkoxy group having 1 to 18 carbon atoms which may be substituted by a fluorine atom,
an aromatic hydrocarbon group having 6 to 20 carbon atoms which may be substituted by a fluorine atom,
a heteroaromatic group having 3 to 20 carbon atoms which may be substituted by a fluorine atom,
a cyano group,
a fluorine atom, and
a deuterium atom; . . .
A similar amendment should be made to claim 4 with respect to variable X.
Claim Rejections - 35 USC § 102 (AIA )
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.
§ 102(a)(1) Rejection over T. Oshiyama et al., EP 1651013A1 (2004) (“Oshiyama”)
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by T. Oshiyama et al., EP 1651013A1 (2004) (“Oshiyama”). Oshiyama discloses the following compound 35 (formula: C₃₈H₂₄F₈N₂, molecular weight: 660.61), which meets the structural limitations of claim 1 as follows.
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Oshiyama at page 17.
Oshiyama compound 35 meets the following claim 1 limitation, as interpreted above:
Claim 1 . . . wherein a proportion of carbon atom number directly binding with the fluorine atom among a carbon atom number forming the aromatic ring and a carbon atom number forming the heteroaromatic ring is at least 10% . . .
The ring upon which to perform the claim 1 calculation is the following:
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For this particular, assigned aromatic ring as circled above, one of skill calculates each of (1) the number of ring carbons; and (2) the number of C-F bonds, for insertion into the following claim 1 formula:
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Plugging these numbers into the claim 1 calculation, a value of 4/6 = 66% is obtained, which is greater than 10% and meets the claim 1 limitation at issue.
Furthermore, Oshiyama compound 35 is asserted to have a melting point (or glass transition temperature), which is 60 °C or higher because it is about molecular weight isomeric with some instantly disclosed compounds (see e.g., instantly disclosed compound (A137) at specification page 184.4 Oshiyama compound 35 meets each and every limitation of the metal patterning material of claims 1 and 2.
The limitations of claim 3 are met with respect to Formula (2), where Ar4 to Ar7 each independently represent a monocyclic aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; L4-L9 are a single bond; X is a monocyclic linked divalent aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; and d and e each independently represent an integer of 1.
The limitations of claim 4 are clearly met.
The limitations of claim 5 are met with respect to Formula (5), where Ar4 to Ar7 each independently represent a monocyclic aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; L104-L109 are a single bond; B is a monocyclic linked divalent aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; and a4 and a5 each independently represent an integer of 1.
§ 102(a)(1)/(2) Rejection over T. Onikubo et al., US 2001/0033944 (2001) (“Onikubo”)
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by T. Onikubo et al., US 2001/0033944 (2001) (“Onikubo”). Onikubo discloses the following compound 33 (formula: C72F68N₂, molecular weight: 2183.90 g/mol.
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Onikubo compound 33 meets the following claim 1 limitation:
Claim 1 . . . wherein a proportion of carbon atom number directly binding with the fluorine atom among a carbon atom number forming the aromatic ring and a carbon atom number forming the heteroaromatic ring is at least 10% . . .
Where the ring upon which to perform the claim 1 calculation may be the following:
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Plugging these numbers into the claim 1 calculation, a value of 4/6 = 66% is obtained, which is greater than 10% and meets the claim 1 limitation at issue.
Furthermore, Onikubo compound 33 is asserted to have a melting point (or glass transition temperature), which is 60 °C or higher because it is structurally complete compound that falls within the clamed genera. See footnote 4. Onikubo compound 33 meets each and every limitation of the metal patterning material of claims 1 and 2.
The limitations of claim 3 are met with respect to Formula (2), where Ar4 to Ar7 each independently represent a monocyclic aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; X represents a linked divalent aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; L5, L6, L8, and L9 are a monocyclic, divalent aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; L4 and L7 are a single bond;; and d and e each independently represent an integer of 1.
The limitations of claim 4 are clearly met.
The limitations of claim 5 are met with respect to Formula (5), where Ar4 to Ar7 each independently represent a monocyclic aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; L105, L106, L108, and L109 are a monocyclic, divalent aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; L104 and L109 are a single bond; B is a monocyclic linked divalent aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; and a4 and a5 each independently represent an integer of 1.
§ 102(a)(1) Rejection over S. Hyun et al., KR 20190143237 A (2019) (“Hyun”)
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by S. Hyun et al., KR 20190143237 A (2019) (“Hyun”). Hyun is a Korean-language patent document. An English-language machine translation is attached as the first half of reference Hyun. Hyun thus consists of 60 total pages. Accordingly, this Office action references Hyun page numbers in the following format “xx of 60”.
Hyun discloses compounds that anticipate the claims. For example, the following compounds 18, 45 and 58.
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Having respective molecular weights of 846.6 g/mol, 1098.9 g/mol, and 1000.8 g/mol, which fall within the claim 1 and 2 range. Hyun compound’s 18, 45 and 58 meet the following claim 1 limitation:
Claim 1 . . . wherein a proportion of carbon atom number directly binding with the fluorine atom among a carbon atom number forming the aromatic ring and a carbon atom number forming the heteroaromatic ring is at least 10% . . .
where the ring upon which to perform the claim 1 calculation is either of the following:
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Plugging these numbers into the claim 1 calculation, a respective value of 5/6 = 83% or 4/6 = 66% is obtained, which is greater than 10% and meets the claim 1 limitation at issue.
Furthermore, Hyun compound’s 18, 45 and 58 are asserted to have a melting point (or glass transition temperature), which is 60 °C or higher because it is structurally complete compound that falls within the clamed genera. See footnote 4. Hyun compound’s 18, 45 and 58 each meet each and every limitation of the metal patterning material of claims 1 and 2.
The limitations of claim 3 are met with respect to Formula (2), where Ar4 to Ar7 each independently represent a monocyclic aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; X represents a condensed divalent to tetravalent heteroaromatic group having 3 to 25 carbon atoms which may be substituted; L4-L9 are a single bond; and d and e each independently represent an integer of 1.
The limitations of claim 4 are clearly met.
The limitations of claim 5 are met with respect to Formula (5), where Ar4 to Ar7 each independently represent a monocyclic aromatic hydrocarbon group having 6 to 25 carbon atoms which may be substituted; L105-L109 are a single bond; B is a condensed divalent heteroaromatic group having 3 to 25 carbon atoms which may be substituted; and a4 and a5 each independently represent an integer of 1.
The limitations of claim 6 are met with respect to Formula (7), where Ar15 and Ar16 each independently represent a monocyclic aromatic hydrocarbon group having 6 to 25 carbon atoms; L19-L22 are a single bond; Y is a condensed divalent heteroaromatic group having 3 to 25 carbon atoms which may be substituted; and g and h each independently represent an integer of 1.
The limitations of claim 7 are met for the following reasons. Variable Y in claim 7 (per base claim 6), respecting Hyun compound 58, can be assigned as the “linked”5 divalent heteroaromatic group as follows
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Claim 7 further requires:
Claim 7 . . . when Y is a substituted divalent to tetravalent aromatic hydrocarbon group, substituted divalent to tetravalent heteroaromatic group, substituted divalent to tetravalent alkyl group, or substituted divalent to tetravalent silicon atom, these groups are each independently substituted by at least one selected from the group consisting of: . . . a deuterium atom.
Thus, the base claim 6, “linked divalent . . . heteroaromatic group . . . which may be substituted”, is required by claim 7 to have at least one claim 7 listed substituent. In the above prior art compound, corresponding group Y meets this limitation because it is substituted by at least one selected from a deuterium atom.6
Claim 8 is anticipated because the claim 8 L19 and Y variables may be assigned as follows:
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The limitations of claim 9 are clearly met.
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.7 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).
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus. MPEP § 2163(II)(A)(3)(a)(ii). 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). Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. MPEP § 2163(II)(A)(3)(a)(ii) (citing AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014).
The § 112(a) rejection
Claims 1-5 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because neither the art of record nor the application as filed disclose either: (1) sufficient species of:
Claim 1 A metal patterning material, comprising a compound having, in a molecule: an aromatic ring and/or heteroaromatic ring, a fluorine atom, and at least one tertiary amine . . .
or (2) a structure-function correlation between the “compound” and its glass transition temperature, such that one of skill can recognize those “metal patterning materials”, otherwise falling within the claim 1-5 genera, that meet the limitation of:
claim 1 . . . wherein a glass transition temperature is 60°C or higher.
As such one of skill would not recognize that Applicant was in possession of the full scope of claimed genera as of the effective filing date.
Claim Breadth
Claim breath is relevant to the instant § 112(a) written description rejection. 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 claim 1-2 breadth is vast because the “compound having8, in a molecule: an aromatic ring and/or heteroaromatic ring, a fluorine atom, and at least one tertiary amine” is generically defined.
Claims 3-5 recite (dependent upon claim 1) complete generic formulae. Their scope is vast because variables L, X, Ar, A, and B are generically defined.
Guidance in the Art and Specification
Guidance in the Specification
The specification teaches that “[d]ue to being able to maintain a stable thin film even under high-temperature conditions, the metal patterning material has a glass transition temperature of at least 60°C”. Specification at page 229, [0234]. The specification teaches the experimental procedure to determine glass transition temperature. Specification at pages 263-264, [0281].
The specification gives no guidance as to how to select, arrange, mix or match the claimed structural variables so as to arrive at the claimed “glass transition temperature is 60°C or higher”. The specification gives no discussion of how different structural variables (or their arrangement) affects glass transition temperature.
The specification discloses compounds (A1)-(A769) as exemplary of the invention. Specification at pages 174-226.
Guidance in the Art
The art teaches that generally, the temperature dependence of the structural relaxation time for a given glass former is only experimentally accessible after synthesizing it. C. Borredon et al., 15 Journal of Non-Crystalline Solids: X, 1-8 (2022) (see Abstract). Borredon proposes combining artificial neural networks and disordered systems theory to estimate the glass transition temperature and the temperature dependence of the main relaxation time based on the knowledge of the molecule’s chemical structure. Borredon at Abstract.
Yalkowsky teaches that melting is a complex process which is dependent upon the balance between the enthalpic forces holding the molecules in their crystal lattice and the effect of entropy, which favors the break-up of the crystal lattice. S. Yalkowsky et al., 107 Journal of Pharmaceutical Sciences, 1211-1227 (2018) (see page 1212, col. 1). Yalkowsky teaches the relationships of these entropy determining parameters to chemical structure are used to develop a reasonably accurate means of predicting the melting points over 2000 compounds. Yalkowsky at Abstract.
However, no art of record is filed by Applicant nor identified by the Examiner in searches that the provides a structure-function relationship permitting one of skill to visualize or recognize those members of the claim 1-5 genera that have a glass transition temperature is 60°C or higher”.
Original Claims 1-5 Lack Adequate Written Description Support
Original claims 1-5 lack adequate written description support because neither the art of record nor the application as filed disclose either: (1) sufficient species of:
Claim 1 A metal patterning material, comprising a compound having, in a molecule: an aromatic ring and/or heteroaromatic ring, a fluorine atom, and at least one tertiary amine . . .
or (2) a structure-function correlation between the “compound” and its glass transition temperature, such that one of skill can recognize those “metal patterning materials”, otherwise falling within the claim 1-5 genera, that meet the limitation of:
claim 1 . . . wherein a glass transition temperature is 60°C or higher.
The specification discloses compounds (A1)-(A769) as exemplary of the invention. Specification at pages 174-226. Even assuming that all 769 species exhibit the claimed “glass transition temperature is 60°C or higher”, these species are not representative of the full claim scope. The claims recite aromatic and heteroaromatic, which can be optionally substituted. However, the only aromatic groups within the disclosed species are phenyl, pyrene, fluorene, phenanthrene, anthracene, naphthalene; the only heteroaromatic groups within the disclosed species are dibenzofuran, dibenzothiofuran, 1,3-thiazole, 1,3,5-triazine, carbazole, and pyrimidine; and the only substituents are F, CF3, and t-butyl (at various locations). Further, the only alkyl groups within the disclosed species that correspond to central variables X or B are cyclohexyl and adamantly. The disclosed species further reveal no common core representative of the full scope of the claimed genera that can be attributed to the glass transition temperature. Thus, although 769 species are disclosed, the disclosed species are not representative of the entire claimed genera. 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). Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. MPEP § 2163(II)(A)(3)(a)(ii) (citing AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014).
As stated above, the written description requirement may also 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). Here, claims 1-5 represent a partial (claims 1 and 2) or complete (claims 4 and 5) chemical structure; however, the claimed structure is not coupled with a known or disclosed correlation between the function of “a glass transition temperature is 60°C or higher” and the structure. MPEP § 2163(II)3(a). It is true that the art teaches that glass transition temperature or melting points can be experimentally determined or estimated based on assumptions and mathematical calculations. Thus, one of skill can simply test any particular claimed compound (experimentally or in a mathematical model) to determine whether it satisfies the claim 1 requirement of “a glass transition temperature is 60°C or higher”. However, that is not the standard under § 112(a). 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).
Conclusion
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 The specification does not provide guidance on interpretating this clause and so it is given its plain meaning.
2 The claim 1 recitation of “is at least 10%” clearly requires that the “an aromatic ring and/or heteroaromatic ring” is substituted with at least one fluorine atom.
3 Transitional phrases such as "having" must be interpreted in light of the specification to determine whether open or closed claim language is intended. MPEP § 2111.03(IV).
4 Where the claimed and prior art products are identical or substantially identical in composition to a claimed composition, a prima facie case of either anticipation or obviousness has been established subject to Applicant’s rebuttal. MPEP § 2112.01(I) (citing In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (holding that a prior art structure anticipated a claimed structure even though a claimed functional recitation was not specifically taught in the prior art reference because applicant had failed to show that the prior art did not possess the functional characteristics of the claims)).
5 In the absence of a specification interpretation guidance, the claimed “linked divalent . . . heteroaromatic group . . . which may be substituted” is broadly and reasonably interpreted as one heteroaromatic group directed bonded to another. MPEP § 2111.
6 This is because the natural isotopic abundance of Hydrogen 1H is 99.985 % and that of 2H is 0.015 %. W. Meier-Augenstein et al., Stable Isotope Analysis: General Principles and Limitations, In Wiley Encyclopedia of Forensic Science, 1-15 (2012). MPEP § 2112(IV); see also, MPEP § 2112(II) (citing Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) (“[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation”).
7 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”).
8 Transitional phrases such as "having" must be interpreted in light of the specification to determine whether open or closed claim language is intended. MPEP § 2111.03(IV). Here the term “having” is interpreted as synonymous with "comprising" as open-ended and does not exclude additional, unrecited elements. MPEP § 2111.03(I).
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