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.
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 uses an ASTM limitation which makes the claim indefinite.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1-9 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Oshima et al. (US 2021/0108371).
Regarding claim 1, 3-7, 9
Oshima discloses a paper (i.e., a polymer made from cellulose, i.e., a sugar) comprising a layer formed on a surface thereof, wherein the layer comprises a graft chain formed from a compound (A), wherein the fourth structure shown reads directly on or makes the claimed amide compound obvious where the long chain hydrocarbon group (R3) is 13 to 27 carbon atoms (claim 13).
With respect to the limitation on being biobased, it is noted that such is a product-by-process limitation, and does not add to the patentability of a composition claim unless it can be shown that the method used will result in a materially different product.
With respect to the limitation of being configured to be applied to a substrate, it is noted before the graft chain is grafted to the paper (i.e., substrate) it is necessarily configured to be applied to a substrate, and is then indeed applied to a substrate.
Regarding claim 2
The compound of Oshima meets the first formula.
Regarding claim 8
The percentage of the compound that is biobased is a product-by-process limitation, and nothing in the record shows that the source from which the compounds are derived will result in a materially different composition.
Regarding claims 13-15
Oshima discloses the use of a solvent such as water (para 0091-0092).
Regarding claim 16
The source from which the carbon is derived is a product-by-process limitation, and applicants have not shown that the process used will result in a materially different product.
Response to Arguments
Applicants argue against the 112 rejection.
Applicants argue that the use of ASTM in the claim does not make it indefinite. This is not persuasive as ASTM standards are not static and may change overtime. As such the use of an ASTM standard in the claims, make the claim indefinite as it cannot be determined what are the metes and bound of the claim.
Applicants argue against the prior art rejections.
Applicants argue that the compound (A) would not be an agent. This is not persuasive and before the compound is grafted to the paper it would be an agent.
Applicants argue that compound (A) does not meet the requirements of claim 1. This is not persuasive and applicants have failed to point to any limitations which are not met.
Applicants argue that compound (A) is not a compound. This is not persuasive as even applicants call it a compound. Further, before the compound is grafted to the paper it will be a separate and distinct compound.
Applicants argue that their compound is configured to be applied to a substrate. While this may be true it is not persuasive as compound (A) is also configured to be applied to a substrate.
Applicants argue that the use of water only applies to the solution of compound (A). This is not persuasive as all the claim requires is the amide compound and water.
Applicants argue that the solution does not contain the biobased material. This is not persuasive as the solution is applied to paper, and when it is the limitations of the claim are met.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734