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 .
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 1-16 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 1-16 are indefinite for claiming the invention in terms of physical properties rather than the chemical or structural features that produce said properties. Ex parte Slob, 157 USPQ 172, states, “Claims merely setting forth physical characteristics desired in an article, and not setting forth specific composition which would meet such characteristics, are invalid as vague, indefinite, and functional since they cover any conceivable combination of ingredients either presently existing or which might be discovered in the future and which would impart said desired characteristics.” Also, “it is necessary that the product be described with sufficient particularity that it can be identified so that one can determine what will and will not infringe.” Benger Labs, Ltd v. R.K. Laros Co., 135 USPQ 11, In re Bridgeford 149 USPQ 55, Locklin et al. v. Switzer Bros., Inc., 131 USPQ 294; furthermore, “Reciting the physical and chemical characteristics of the claimed product will not suffice where it is not certain that a sufficient number of characteristics have been recited that the claim reads only on the particular compound which applicant has invented.” Ex parte Siddiqui, 156 USPQ 426, Ex parte Davission et al., 133 USPQ 400, Ex parte Fox, 128 USPQ 157.
In the instant claims the Applicant has recited the invention in terms of the ratio of an absorbance area at a wavelength of 1647 cm-1 to 1627 cm-1 and a wavelength of 1800 cm-1 to 1647 cm-1 in an infrared absorption spectrum rather than reciting the specific chemical compositions that give rise to said absorbance ratio. The claims are therefore indefinite as they fail to recite a sufficient number of characteristics such tha the claim read only on the particular compound which the applicant has invented. Furthermore, as recited one of ordinary skill in the art would not be able to ascertain, absent undue experimentation, which existing photoreceptors would and would not infringe. For all the reasons cited in this rejection the Applicant’s claims are indefinite. In order to overcome this rejection, the Applicant should amend the claim to recite the specific compositions that combine to give rise to the recited properties of the claimed photoreceptor.
Conclusion
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/PETER L VAJDA/ Primary Examiner, Art Unit 1737 09/30/2025