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 .
Election/Restrictions
Applicant’s election without traverse of compound I-32 for a near-UV light-absorbing compound and P-6 as a species of general formula (P) in the reply filed on 2025 August 28 is acknowledged. Claims 1-16 are examined on the merits.
Claim Objections
Claims 1-16 are objected to because of the following informalities: the image
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is grainy and 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) 1-16 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 1-7 and 9-15 are drawn to a composition comprising a near-ultraviolet light absorbing compound, indium tin oxide particles, and a polymer comprising at least one monomer of formula (P).
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(1) Level of skill and knowledge in the art:
DETERT (Journal of Physical Organic Chemistry, 2000, 13, 587-590) describe that oligo(phenylenevinylene)s
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CREED (Photochemistry and Photobiology, 1984, 39(4), 563-575) describe tyrosine near-UV absorbing compounds (page 566).
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(2) Partial structure:
Compounds 1-3 represent separate genera of a near-ultraviolet light absorbing compound.
(3) Physical and/or chemical properties and (4) Functional characteristics:
Table 1 (pages 69-70, paragraphs [0246]-[0247] shows spectroscopic properties of different compounds in the examined application.
(5) Method of making the claimed invention:
An example of curable resin is described (page 72, paragraphs [0252]-[0253]).
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) 1-7 and 9-15 is/are broad and generic, with respect to all possible compounds encompassed by the claims. The possible structural variations are limitless to any near-UV absorbing compounds. 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 1-3 of claim 8 and 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 1-16 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.
Claims 1-7 and 9-16 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 elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: the structural metes and bounds of a near-ultraviolet light-absorbing compound. The claims only recite that the compound can absorb near-UV light but do not clearly recite the organic functional groups are present.
DETERT (Journal of Physical Organic Chemistry, 2000, 13, 587-590) describe that oligo(phenylenevinylene)s
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CREED (Photochemistry and Photobiology, 1984, 39(4), 563-575) describe tyrosine near-UV absorbing compounds (page 566).
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Are the near-UV absorbers of Detert and Creed intended to be present in a composition?
Claim 8 lacks antecedent basis to claim 1 because claim 1 does not recite specific metes and bounds for a near-UV absorbent compound.
Allowable Subject Matter
Claims 1-16 are not allowed.
The following is a statement of reasons for the indication of allowable subject matter: XU (US 20140322549, published 2014 October 30) describes a composition comprising benzyl methacrylate and trimethyolpropane triacrylate (page 3, paragraph [0045]; page 4, paragraph [0056]). The benzyl methacrylate has no acidic group nor is a near-ultraviolet light absorbing compound present either.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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