DETAILED ACTION
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 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 1-21 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant recites ArT1:
ArT1 represents an aryl group, a monovalent hetero ring group or a substituted amino group, and these groups optionally have a substituent, when a plurality of the substituents are present, they may be the same or different and may be combined together to form a ring together with atoms to which they are attached, when a plurality of ArT1 are present, they may be the same or different and they may be combined together directly or combined via a divalent group to form a ring
The office notes that ArT1 is defined by the following generic materials:
an aryl group
a monovalent hetero ring group
a substituted amino group
In particular, paragraph [0024] of the present specification defines substituted amino groups and provides representative examples
From paragraph 24, the substituted amino group includes a dimethylamino group, a diethylamino group, a diphenylamino group, a bis (methylphenyl) amino group, and a bis (3, 5-di-tert-butylphenyl) amino group. The office maintains that the scope generic term substituted amino group far exceeds the scope of the limited examples in the specification.
In particular, paragraph [0035] describes "the substituted amino group represented by Arᵀ¹." While the Specification supports a substituted amino group as an alternative for Arᵀ¹, and not just a substituent on another group. The office emphasizes the claims should be interpreted in the light of the specification but ample support for the scope of the claims must be present in the specification. As defined in the claims, the scope of the claims far exceeds the examples provided in the specification.
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. Ariad, 598 F.3d at 1353–54 The purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification. The office maintains that the entire scope of the claims is not supported by the specification.
The present specification provides compounds within Formula (T-1). In particular, paragraph [0046] indicates compounds represented by Formula (T-1) include the compounds represented by the formulae that follow, as well as compounds T1 to T12 described later. Chemical Formulae 11-19 in paragraph disclose numerous specific chemical structures falling within Formula (T-1). The office views the specification here as providing the limits to the types of materials for which there is support; however, as defined in claim 1, the materials encompassed by broad generic verbiage is not so limited. The limiting factors implied by the examples offered by the specification cannot be read into claims when the claims have set no scope so limited as examples in the specification.
Per MPEP 2163(II)(A)(3)(a)(ii), the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by (A) actual reduction to practice, (B) reduction to drawings, or (C) 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 applicant was in possession of the claimed genus. A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.
The office concludes that the written description in the specification in fails to show:
an actual reduction to practice with a representative number of species encompassed in ArT1 with respect to the scope of claim 1.
reduction to drawings or (C) by disclosure of relevant, identifying characteristics, i.e., structure. With the exception of the limited examples presented in claim 7 for aryl and monovalent hetero ring groups, the specification fails to show specific examples which indicate that applicant was in full possession of the scope of claim 1 before the filing date.
The written description in the specification does not support the full scope of the claim 1. In other words, by having a claim written as such the scope extends beyond the material requirements supported in the Specification. As such claim 1 and all the other claims requiring the limitations of claim 1.
Response to Amendment
Applicant has specific examples of materials used in the invention but continues to rely upon generic descriptions which encompass materials not supported by the specification which brings into question applicants’ possession of the entire scope of claim 1. The office is willing to grant a post final interview in an effort reach common ground to avoid prolonged prosecution.
Conclusion
Applicants’ 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 GREGORY D CLARK whose telephone number is (571)270-7087. The examiner can normally be reached on 8AM-4PM M-F.
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, Jennifer Chriss can be reached on 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY D CLARK/Primary Examiner, Art Unit 1786
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