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 .
Rejections
Claim Rejections - 35 USC § 112
1. 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.
2. Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the disclosed substituted compounds, does not reasonably provide enablement for all of the instantly claimed “substituted” compounds. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
A. The instant claims 1-12 recite “substituted” without specifying the substituents. Therefore, the claims encompass all possible substituents. The instantly claimed “substituted” reads on an infinite number of compounds resulting from the potentially infinite number of substitutions which can be performed on the recited compounds. In re Wands has 8 criteria, (MPEP 2164.01(a)), as shown below.
(A)The breadth of the claims;
(B)The nature of the invention;
(C)The state of the prior art;
(D)The level of one of ordinary skill;
(E)The level of predictability in the art;
(F)The amount of direction provided by the inventor;
(G)The existence of working examples; and
(H)The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
It is noted that the instant claims read on all potential substitutions of the recited compounds which encompasses an infinite number of compounds (Wands factors A and B). The specification does not describe how to make all such substituents, how to add them to the claimed compounds, nor how to select those substituents from the infinite list thereof which will function as required in the instant invention (Wands factors B, F, G). It would require an infinite amount of experimentation to determine how to make all of the substituents encompassed by the instant claims and another infinite amount of experimentation to determine which of these substituted compounds would function in the instantly claimed invention as required (Wands factors B and H). Chemistry is an unpredictable art (Wands factors B and E). The ordinary skilled artisan has not imagined nor figured out how to make all of the substitutions encompassed by the instant claim of “substituted” yet (Wands factors B, C, D, E, F, G, and H). The enabling disclosure is not commensurate with the full scope of the claimed “substituted”.
See Sitrick v Dreamworks, LLC (Fed Cir, 2007-1174, 2/1/2008), particularly:
“Before MICHEL, Chief Judge, RADER and MOORE, Circuit Judges.
MOORE, Circuit Judge.
112(1) Enablement - The enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation
We review the grant of summary judgment de novo. LiebeI-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1377 (Fed. Cir. 2007). Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). Whether a claim satisfies the enablement requirement of 35 U.S.C. § 112, ¶ 1 is a question of law, reviewed de novo, based on underlying facts, which are reviewed for clear error. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003). The evidentiary burden to show facts supporting a conclusion of invalidity is one of clear and convincing evidence because a patent is presumed valid. Id. The “enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.” Id. at 1244.
112(1) Enablement - The full scope of the claimed invention must be enabled.
A patentee who chooses broad claim language must make sure the broad claims are fully enabled.
The full scope of the claimed invention must be enabled. See Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007). The rationale for this statutory requirement is straightforward. Enabling the full scope of each claim is “part of the quid pro quo of the patent bargain.” AK Steel, 344 F.3d at 1244. A patentee who chooses broad claim language must make sure the broad claims are fully enabled. “The scope of the claims must be less than or equal to the scope of the enablement” to “ensure[] that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.” Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999).”
The instant specification, paragraphs [0124]-[0125] are noted in this regard. Paragraph [0125] recites “include, without limitation:”. “[I]nclude” is open language. “[W]ithout limitation” is taken as meaning the substituents are not limited to those recited either. The instant specification is not seen as defining “substituted” in a manner which limits it to specific substituents. Therefore, the instantly claimed “substituted” compounds are not limited to those substituents specifically described in the instant specification. The “substituted” compounds which are not described in the enabling specification are not enabled.
3. 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.
4. Claims 1-12 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.
A. It is unclear what type of average polymer molecular weight is required by the instantly claimed “mass of 24 to 2000” of the instantly claimed polyols when they are polymers, e.g. number average, weight average, z average, viscosity average, or some other type of average molecular weight. See Odian, G., “Principles of Polymerization”, Third Ed., John Wiley & Sons, Inc., 1991, pages 19-24. Particularly note the different average molecular weight definitions of pages 19-23. Particularly note the first full paragraph of page 23 for the importance of specifying the type of average molecular weight.
It is not seen that the instant specification defines the type of average molecular weight. The examiner notes the instant specification, paragraphs [0054] and [0055], including the PEG-200, PEG-400, and PEG-600. These terms of trade indicate that the molecular weights are 200, 400, and 600 respectively. However, the types of molecular weights must also be specified. Note US Pat. Application Publication No. 2007/0149632 Haider et al., paragraph [0032], which gives the PEG-400 and PEG-600 molecular weights as number average molecular weights. Also note US Pat. No. 5328935 Van Phan et al., column 53, lines 45-47 which gives the molecular weight of PEG-600 as a weight average molecular weight. The references to PEG-200, PEG-400, and PEG-600 are therefore not sufficient to determine the type of average molecular weight when the instantly claimed polyols are polymers. It is therefore not clear what type of average polymer molecular weight is intended when the claimed polyols are polymers because the types of polymer molecular weights are not particularly pointed out and distinctly claimed as required by the above cited statute.
It is also not clear what units are required of the molecular weights, e.g. g/mole, Daltons, kg/mole, or some other units because the units are not particularly pointed out and distinctly claimed as required by the above cited statute.
For the purposes of examination, any type of polymer molecular weight and any molecular weight units will be taken as reading on the instant claims.
Claim Rejections - 35 USC § 102
5. 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.
6. Claims 1-3, 5, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. No. 10093816 Chen et al.
Regarding claims 1-3, 5, 9, and 10:
Chen discloses an ink composition for digital textile printing which contains at least one reactive dye, organic buffer, humectant and solvent. See Chen, the abstract, column 2, lines 3-19, and column 11, lines 36-44. The reactive dye of Chen, column 11, lines 45-60 falls within the scope of the reactive dye of the instant claims 1, 2, 3, and 5. Combining the ingredients of Chen gives the method steps of the instant claim 10.
See Chen, column 12, lines 25-45, noting the discussion of the buffer, which falls within the scope of the instantly claimed auxiliary agent.
See Chen, column 12, lines 47-53, noting the polyols that fall within the scope of the instantly claimed polyol.
See Chen, column 13, lines 1-3, noting particularly line 3, particularly the statement that water is the preferred solvent.
The surfactant of Chen, column 13, lines 4-22, falls within the scope of the instantly claimed auxiliary agent.
The microbicide of Chen, column 13, lines 23-35, falls within the scope of the instantly claimed auxiliary agent.
Chen, column 19, lines 1-33 exemplifies an aqueous inkjet composition containing the instantly claimed ingredients and amounts which fall within the scope of the instant claims so as to anticipate the instant claims1-3, 5, 9, and 10. The dye therein falls within the scope of the instantly claimed reactive dye, the polyols therein fall within the scope of the instantly claimed polyols. The additional ingredients, other than water, fall within the scope of the instantly claimed auxiliary agents. The exemplified amounts of these ingredients fall within the scope of the instantly claimed amounts.
7. Claims 1-6 and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. No. 5250121 Yamamoto et al. with US Pat. Application Publication No. 2023/0399795 Fang et al. being cited as evidence.
Regarding claims 1-4, 6, and 10:
Yamamoto discloses inkjet inks containing reactive dyes having monochlorotriazine and vinyl sulfone groups, water, polyol, and various polyethylene glycol dialkyl ethers and monomethyl ethers, which fall within the scope of the instantly claimed auxiliary agent, and amounts of these ingredients which fall within the scope of the instant claims. It is noted that the thiodiglycol also falls within the scope of the instantly claimed auxiliary agent. Yamamoto discloses adding diethylene glycol and triethylene glycol to their inks which fall within the scope of the instantly claimed polyols. Yamamoto, column 5, lines 17-23 and 30-31, noting “C.I. Reactive Red” and “24”, teaches that the reactive dye of Yamamoto, column 13, lines 41-49 falls within the scope of the instantly claimed reactive dye. This example uses 15 weight% of diethylene glycol which falls within the scope of the instantly claimed polyol and its amounts. The water is noted. The thiodiglycol and its amount fall within the scope of the instantly claimed auxiliary agent. The remaining component is encompassed by the open language “comprising” of the instant claims. This example anticipates the instant claims. The example of Yamamoto, column 18, lines 55-62 coupled with column 5, lines 17-23 and 48-49, noting “C.I. Reactive Black” and “5” anticipates the instant claims also. The example of Yamamoto, column 20, lines 58-65 anticipates the instant claims. The example of Yamamoto, column 23, lines 1-11 anticipates the instant claims. The example of Yamamoto, column 24, lines 65-68 and column 25, lines 1-6 anticipates the instant claims. The comparative examples of Yamamoto, column 10, lines 20-27, column 19, lines 28-36 and 40-49, column 21, lines 15-23, column 23, lines 15-24, and column 25, lines 11-19 anticipate the instant claims.
See Yamamoto, column 9, lines 33-41, 50-55, 65-68, column 10, lines 20-27, column 12, lines 5-12, 15-25, 30-37, and 44-50, column 13, lines 58-65, column 14, lines 1-10 and 30-37 and the remaining examples of Yamamoto containing ingredients and amounts thereof falling within the scope of those of the instant claims. Yamamoto thereby exemplifies compositions falling within the scope of the instantly claimed inkjet inks of the instant claims 1-3. Yamamoto, column 5, lines 17-20, noting particularly “and” of “and/or” of line 19, encompasses two or more monochlorotriazine and vinyl sulfone groups which falls within the scope of the instant claims 3 and 4, particularly the reactive dyes prepared by monochloro-s-triazine compounded with vinyl sulfone thereof. The exemplified various polyethylene glycol dimethyl ethers and monomethyl ethers of Yamamoto are cosolvents of the instant claim 6. The method of making the inks of Yamamoto discussed above falls within the scope of the instant claim 10.
Regarding claim 5:
Claim 5 further describes the reactive dye with trifunctional reactive groups but does not require that dye to be chosen. The above reference therefore anticipates the instant claim 5 though it uses the difunctional reactive dye of the instant claim 3.
Regarding claim 9:
It is not seen that “digital inkjet ink” of the instant claim 9 distinguishes the inkjet ink of the instant claim 9 over that of Yamamoto. Furthermore, the references to inkjet printing of Yamamoto, including at column 1, lines 7-8 and 22-27 and column 10, lines 33-41, noting the Canon Pixel Pro all imply digital inkjet ink with sufficient specificity to anticipate “digital inkjet ink”.
Regarding claims 11-12:
Yamamoto discloses and exemplifies pretreating their fabric with an alkali treatment. See column 11, lines 1-4, particularly noting the alkali treatment of lines 2-4. It is clear from Fang, claims 7-9, that such alkali treatments fall within the scope of pretreating the cloth with a primer of the instant claim 11. It is noted that the composition of the instantly claimed primer is not limited.
Yamamoto exemplifies printing the above discussed inkjet inks onto these pretreated fabrics. This qualifies as the dying of the instant claim 11 also because the printing applies dye to the fabric. Yamamoto exemplifies fixing their inks to the fabric by steaming for 2 minutes. See Yamamoto, column 10, lines 33-68 and column 11, lines 1-12, particularly noting the steaming at 100℃ for 2 minutes of lines 4-5. This exemplified method of Yamamoto anticipates the method of the instant claims 11 and 12.
Claim Rejections - 35 USC § 103
8. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
9. Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 5250121 Yamamoto et al. with US Pat. Application Publication No. 2023/0399795 Fang et al. being cited as evidence, in view of US Pat. Application Publication No. 2018/0371280 Garzon et al., US Pat. Application Publication No. 2003/0015120 Adamic et al., and US Pat. No. 6432186 Taniguchi
The entirety of paragraph 3 above is repeated here. Yamamoto does not disclose the additives and amounts thereof of the instant claims 7 and 8.
Regarding claims 7-8:
Yamamoto, column 6, lines 33-44, discloses using additives in their inks including surface active agents, viscosity modifiers, surface tension modifiers, and pH adjusters. Many of these additives overlap with those of the instant claim 7. The surfactants of Yamamoto, column 6, line 35 fall within the scope of the instantly claimed wetting agents according to the instant specification, paragraph [0068], noting that the surface tension lowering is the function performed by surface active agents, i.e. surfactants. The amount of surfactant is not disclosed. The triethylene glycol monomethyl and diethyl ethers exemplified by Yamamoto and their amounts fall within the scope of the cosolvent and amounts thereof of the instant claim 7. Note Yamamoto’s Examples 2, 3, 8, and 9 for example.
Garzon, paragraph [0080], discloses using 0.001 to 1% of defoamer, i.e. defoaming agent, 0.01 to 5% of leveling agent, and 0.01 to 5% of antibacterial agent. Garzon, paragraph [0202], discloses adding buffering agents, which are pH regulators, in unspecified amounts.
Adamic, paragraphs [0024], [0047], and [0048], discloses using 0 to 1.5 wt% of buffer, which is pH regulator, and 0 to about 1.5 wt% of metal chelator, which is chelating agent, in aqueous inkjet inks. Adamic, paragraph [0049], discloses EDTA as their chelating agent which falls within the scope of the instant claim 8.
Taniguchi shows surfactants to be wetting agents at column 5, lines 57-67 and column 6, lines 1-51, particularly noting the wetting function described at about lines 41-43.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the ingredients and amounts thereof of the instant claims 7 and 8 in the inkjet inks of Yamamoto which fall within the scope of the instant claim 6 because such additives and amounts thereof are encompassed broadly by Yamamoto, column 6, lines 33-45, Yamamoto exemplifies the use of the instantly claimed amounts of cosolvents, as discussed above, Taniguchi shows that surfactants in the instantly claimed amounts of wetting agents give wetting at column 5, line 57 to column 6, line 51, as discussed above, Garzon discloses the instantly claimed amounts of defoaming agent, leveling agent, and antibacterial agent, and Adamic discloses the instantly claimed amounts of chelating agent and buffer, which is a pH regulator, the inks of Taniguchi, Adamic, and Garzon are similar to those of Yamamoto, and the properties of each of these additives described by their functional names in proportion to their amounts would have been expected in the inkjet inks of Yamamoto.
Response to Applicant’s Arguments
10. The following reply is directed towards the applicant’s arguments regarding the rejections of paragraphs 7 and 9 above:
In their arguments of 11/7/26:
The applicant arguments have been fully considered but are not persuasive for the reasons stated above, particularly noting the examples of Yamamoto which continue to contain the instantly claimed ingredients and amounts, including polyols and amounts thereof falling within the scope of the instantly claimed polyol.
Conclusion
11. Applicant's 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.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number (571)272-1121. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762