DETAILED ACTION
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 .
Applicant’s election without traverse of a composition comprising a compound of formula (I), a UV absorber containing a benzotriazole ring, and metal hydroxide in the reply filed on 2026 January 13 is acknowledged. A search has been extended to a composition comprising one, a compound of formula (I), two, a UV absorber broadly, and three, a metal, or inorganic, oxide.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2025 May 15, 2025 December 25, 2026 January 20 and March 19 were submitted in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are considered by the examiner.
Claim Objections
Claims 7, 13-18, and 20 are objected to because of the following informalities: the image of a compound of formula (A-1) is illegible due the alkyl groups being hard to read. Appropriate correction is required.
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.
Claim(s) 1-6 and 8-12 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph due to lack of written description.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by him.
The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the Application. These include “level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would lead one of skill in the art to the conclusion that the applicant was in possession of the claimed species is sufficient.” MPEP § 2163. While all of the factors have been considered, a sufficient amount for a prima facie case are discussed below.
In the instant case, claims 1-6 and 8-12 are drawn to a method of stabilizing an organic material by reducing degradation induced by a chlorine-containing compound having a chlorine content in the range of 100-600 ppm, wherein the method comprises incorporating the organic material a stabiliser mixture comprising components (i), (ii), and (iii). Component (i) is selected from different agents. Component (ii) is a UV absorber and component (iii) is a metal, or inorganic, hydroxide.
Level of skill and knowledge in the art:
HUGLIN (Chimia, 2016, 70 (7/8), 496-501) describes UV absorbers with the genus below (page 497, figure 1).
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(2) Partial structure:
Applicants discuss various agrochemical or bleaching chlorine-containing compounds (specification page 36, line 27 to page 37, line 4).
(3) Physical and/or chemical properties and (4) Functional characteristics:
Various compositions are described (pages 73-74, tables 1 and 2).
(5) Method of making the claimed invention:
A method of making the stabiliser composition is described (page 72, lines 13-24).
The MPEP states that written description for a genus can be achieved by a representative number of species within a broad generic. It is unquestionable that claim(s) 1-6 and 8-12 is/are broad and generic, with respect to all possible compounds encompassed by the claims. The possible structural variations are limitless to any method of reducing degradation induced by a chlorine-containing compound having a chlorine content in the range of 100-600 ppm, wherein the method comprises incorporating the organic material a stabiliser mixture comprising components (i), (ii), and (iii). Component (i) is selected from different agents. Component (ii) is a UV absorber and component (iii) is a metal, or inorganic, hydroxide. Although the claims may recite some functional characteristics, the claims lack written description because there is no disclosure of a correlation between function and structure of the compounds beyond those compounds specifically disclosed in the examples in the specification. Moreover, the specification lack sufficient variety of species to reflect this variance in the genus. While having written description of compounds identified in the specification tables and/or examples, the specification does not provide sufficient descriptive support for the myriad of compounds embraced by the claims.
The description requirement of the patent statue requires a description of an invention, not an indication of a result that one might achieve if one made that invention. See In re Wilder, 736, F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming rejection because the specification does “little more than outlin[e] goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate.”) Accordingly, it is deemed that the specification fails to provide adequate written description for the genus of the claims and does not reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the entire scope of the claimed invention.
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 1-18 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.
In claims 1-6 and 8-12, what is the parts per million concentration of chlorine based on? MARCZEWSKI (Extension Bulletin E-1641, 1982, pages 1 and 2) describes that parts per million is defined as 1 mg in a kilogram (page 1). The metes and bounds of the chlorine concentration is indefinite the denominator, kilograms, is unclear. Is the denominator based on the organic material or another substance? In the specification, a sodium hypochlorite, NAClO to water solution in a ratio of 1:4 is specified (page 72, lines 28 and 29). This teaching does not limit the claims. Due to the unclear definition of what a kilogram is based on for purposes of calculating parts per million, this limitation is unclear.
Claims 1-8 and 10-18 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: the structural metes and bounds of a UV absorber. Applicants discuss specific UV absorbers (page 37, line 6 to page 38, line 24) which do not limit the claims. HUGLIN (Chimia, 2016, 70 (7/8), 496-501) describes UV absorbers with the genus below (page 497, figure 1).
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Conclusion
Claims 1-18 and 20 are not allowable.
The following is a statement of reasons for the indication of allowable subject matter: TANG (CN 106397838, published 2015 February 15) describes a composition containing aluminum hydroxide, a benzotriazole UV absorbing agent, and a compound containing a triazine connected to an N-piperidine group. This composition does not anticipate or render obvious a method of claim 1 or a composition of claim 7 for the following reasons: the composition is used in a flame retardant composition; and the triazine polymer is not the same as a compound formula (A-1).
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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