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 .
This office action is in response to applicant’s claims filed March 20, 2023. Claims 1-10 are pending.
Claim Objections
Claims 1-8 and 10 are objected to because of the following informalities: The “:” after wherein is not needed. Further in claim 1. The last line “NH: n=3-200.” Should be changed to “NH and n=3-200.” Appropriate correction is required.
Claim 3 is object to because of thew following informalities: In line 4, applicant should add “wherein” before “the aniline acid anhydride is as follows”. Appropriate correction is required.
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 1-10 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. Claim 1, recites X is zero 0, but X must be an atom. The examiner interpreted X to be oxygen O. In the definition for R5 the -CH2CH2CH2 and NH- are on separate lines, so it is unclear if they are two different substituents or a single substituent. The examiner interpreted the second embodiment of R5 to be a single substituent -CH2CH2CH2NH-.
Claims 2-10 are also rejected for being dependent upon claim 1 and inheriting the same deficiency.
Claim 2 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. Claim 2 recites the fabric is cotton, fabric, linen fabric, wool fabric and silk fabric and the fibers in the fabrics are cotton, linen, wool silk, etc. It is unclear as to what “etc.” encompasses. The fiber listing is unnecessary fabric is made up of fibers and they would be made up of the fibers of the type of fabric they are already disclosed to be.
Claims 3-8 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. Claim 3 recites the limitation "the amino pretreated fabric" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim as claim 1 from which claim 3 depends never recites any amino pretreatment, it only recites the polyamino acid graft chain which is the final product not the pretreatment. Claims 4-8 are also rejected for being dependent upon claim 3 and inheriting the same deficiency.
Claims 4 and 5 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. Claim 4 recites the limitation "the temperature of the reaction" and “the time” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim as claims 3 and 1 from which claim 4 depends never recites any reaction, temperature or time, it only recites mixing. Claim 5 is also rejected for being dependent upon claim 4 and inheriting the same deficiency.
Claims 6-8 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. Claim 6 recites the limitation "the cyclization reaction" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim as claims 3 and 1 from which claim 6 depends never recites any reaction, it only recites mixing. Claim 6 also recites “Boc” in the claim formula structure but never indicates that “Boc” is tert-butyloxycarbonyl. The anagram “Boc should be defined for clarity. The wherein clause of Claim 6 could be rewritten as “preparing the aniline acid anhydride by subjecting N-phenyl-tert-butyloxycarboxyglycine to a cyclization reaction under nitrogen protection wherein the N-phenyl tert-butyloxycarboxyglycine is as follows:” Claims 7 and 8 are also rejected for being dependent upon claim 6 and inheriting the same deficiency.
Claims 7 and 8 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. Claim 7 recites the limitation "Boc" in lines 3, which is not defined as tert-butyloxycarbonyl The anagram Boc should be defined. Further the claim can be rewritten to positively recited the method steps as “preparing the N-phenyl-tert-butyloxycarboxyglycine by reacting n-phenylglycine with tert-butyloxycarbonyl(Boc) acid anhydride in the presence of an acid binding agent.” Claim 8 is also rejected for being dependent upon claim 7 and inheriting the same deficiency.
Claim 8 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. Claim 8 recites the limitation "the time" in line 3. There is insufficient antecedent basis for this limitation in the claim as claims 7,6,3 and 1 from which claim 8 depends never recites any time. The reaction time and temperature clause of claim 8 clause could be rewritten as “the reaction is performed at a temperature of 5-45°C for a time of 0.-24 h.” It should also be clarified which reaction these parameters are for since claim 6 also recites a different cyclization reaction.
Claims 9 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: claims 9 and 10 provide for the use of a polyamino acid-grafted modified water-repellent fabric, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
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.
Claims 9 and 10 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). Claims 9 and 10 provide for the use of a polyamino acid-grafted modified water-repellent fabric, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/028542. Although the claims at issue are not identical, they are not patentably distinct from each other because they teach the same method of reacting the same compounds to produce the same polyamino acid-grafted chain on fabric for water -repellency.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
The claims would be allowable after correction of the claim objection and 112 rejection and ODP issues and as the STIC search, PE2E search and PCT search report for PCT/CN2021/0174016 do not teach any references with the claimed polyamino acid graft chain by itself or further attached on a fabric surface or methods of preparing the fabric.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN 105780474 teaches cotton fabrics with durable hydrophobic finishes (abstract), aminosilane coupling agents and grafting (examples 1 and 2) but does not teach or fairly suggest the polyamino acid graft chain of claim 1 or the methods of preparing a fabric with said polyamino acid graft chain of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMINA S KHAN whose telephone number is (571)272-5573. The examiner can normally be reached Monday-Friday, 9am-5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMINA S KHAN/Primary Examiner, Art Unit 1761