Detailed Office Action
Notice of Pre-AIA or AIA Status
1. 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
2. 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.
3. Claim 35 is 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.
With respect to claim 35, the language, “the first step …” and “the second step …”, lacks antecedent basis.
Prior Art Rejection
4. 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)(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.
5. Claim 46 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Pai et al. (US 2021/0171451 A1)
Pai et al. disclose compositions comprising xylylene diisocyanate and methyl benzyl isocyanate, corresponding to applicants’ Chemical Formula 4, in an amount that meets applicants’ claimed amount. See paragraphs [0044], [0045], and [0062]-[0066]. The disclosure within foreign application priority document KR 10-2019-0161447, having a date of 06 December 2019, within at least paragraphs [0053]-[0055] was effectively filed before the effective filing date of the instantly claimed invention.
Allowable Subject Matter
6. Claims 31-34, 36-45, and 47-50 are allowed.
7. Claim 35 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.
8. Claims 31-45 and 47-50 are allowable over Yamasaki et al. (US 2019/0292304 A1), because the reference fails to disclose the reduction reaction of independent claim 31. Furthermore, it is noted that it is this reduction reaction that converts the chlorinated derivative to the non-chlorinated derivative of the allowed composition claims.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/Primary Examiner, Art Unit 1765
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