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 .
DETAIL ACTION
This office action is a response to an application filed 3/24/2023 claiming domestic priority to 63/356,749 filed 6/29/2022.
As filed, claims 67-90 are pending; and claims 1-66 are cancelled.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/29/2023 has been considered by the Examiner.
Claim Rejections - 35 USC § 112(b)
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 67-90 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.
Regarding claim 1, the claim recites the phrase, “a hydroxy-substituted compound comprising”, wherein the transitional phrase, “comprising” is an open-ended language and therefore include additional subject matter that is not described in the instant specification and is not particularly pointed out or distinctly claimed. The identity of the additional atoms or groups is unknown and how to determine the identity of the additional atoms or groups is not pointed out or distinctly claimed.
The term, “compound”, contradicts the open language "comprises." A "compound" is defined as a substance whose molecules consist of unlike elements and whose constituents cannot be separated by physical means (see Grant & Hackh's Chemical Dictionary (5th Ed. 1987) at page 148). By contrast, a composition is defined as elements or compounds forming a material or produced from it by analysis. Id. In other words, a compound is a molecule with more than one element, and a composition is a mixture of two or more compounds or molecules.
The transitional term "comprising" is synonymous with "including", "containing", and "characterized by". "Comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves “the claim open for the inclusion of unspecified ingredients even in major amounts”).
Thus, a “compound" is singular and requires a definite chemical formula, and the open-ended term "comprises" does not exclude unrecited elements. Furthermore, “comprising”, used in conjunction with “compound” fails to articular exactly what subject matter is excluded from the claim scope of compounds, thereby rendering the scope of claim 1 indefinite.
Regarding claims 68-70 and 81, the claims, respectively, recite the following phrases:
“the phosphorus halide comprises” in claim 68;
“the hydroxy-substituted compound comprises” in claim 69;
“the hydroxy-substituted alkaryl compound comprises” in claim 70; and
“the hydrogen halide comprises” in claim 81.
The transitional phrase, “comprising” is an open-ended language and therefore include additional subject matter that is not described in the instant specification and is not particularly pointed out or distinctly claimed. The identity of the additional atoms or groups is unknown and how to determine the identity of the additional atoms or groups is not pointed out or distinctly claimed.
The Examiner finds that “the phosphorus halide” or “hydrogen halide” is synonymous as a compound, and the term, “compound”, contradicts the open language "comprises." A "compound" is defined as a substance whose molecules consist of unlike elements and whose constituents cannot be separated by physical means (see Grant & Hackh's Chemical Dictionary (5th Ed. 1987) at page 148). By contrast, a composition is defined as elements or compounds forming a material or produced from it by analysis. Id. In other words, a compound is a molecule with more than one element, and a composition is a mixture of two or more compounds or molecules.
The transitional term "comprising" is synonymous with "including", "containing", and "characterized by". "Comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves “the claim open for the inclusion of unspecified ingredients even in major amounts”).
Thus, a “compound" is singular and requires a definite chemical formula, and the open-ended term "comprises" does not exclude unrecited elements. Furthermore, “comprising”, used in conjunction with “compound” fails to articular exactly what subject matter is excluded from the claim scope of compounds, thereby rendering the scope of claims 68-70 indefinite.
Regarding claims 74, the claim recites the following phrases, “wherein the aryl comprises”.
Firstly, instant variables R1 and R2 recite the definition of “aryl” in the abovementioned phrase, which includes the term "comprises." Forms of the term “comprise” are considered open-ended language and therefore include additional subject matter that is not described in the instant specification and is not particularly pointed out or distinctly claimed. The identity of the additional atoms or groups is unknown and how to determine the identity of the additional atoms or groups is not pointed out or distinctly claimed.
The term “compound” contradicts the open language "comprises." A "compound" is defined as a substance whose molecules consist of unlike elements and whose constituents cannot be separated by physical means. Grant & Hackh's Chemical Dictionary (5th Ed. 1987) at page 148. By contrast, a composition is defined as elements or compounds forming a material or produced from it by analysis. Id. In other words, a compound is a molecule with more than one element, and a composition is a mixture of two or more compounds or molecules.
The transitional term "comprising" is synonymous with "including", "containing", and "characterized by". "Comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves “the claim open for the inclusion of unspecified ingredients even in major amounts”).
Thus, a contradiction arises within the definition of “aryl” because a "compound" with these variables requires a definite chemical formula, and the open-ended term "comprises" does not exclude unrecited elements. Furthermore, "comprising", used in conjunction with "compound" fails to articulate exactly what subject matter is excluded from the claimed scope of compounds, thereby rendering the scope of claims 74 indefinite.
Regarding claim 70, the claim is dependent of claim 69, and recites the phrase, “the hydroxy-substituted alkaryl compound”, wherein the word, “the”, requires antecedent basis, and it is unclear where applicant has defined “a” hydroxy-substituted alkaryl compound in claim 69. Without antecedent basis, the claim is rendered indefinite.
Regarding claims 68-90, these claims are directly or indirectly dependent of claim 67, and they failed to correct the indefiniteness issue of claim 67, which rendered these claims indefinite.
Claim Rejections - 35 USC § 112 fourth paragraph
The following is a quotation of the fourth paragraph of 35 U.S.C. § 112:
Subject to the following paragraph [concerning multiple dependent claims], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers (emphasis added).
Claim 74 is rejected under the fourth paragraph of 35 U.S.C. § 112 and under 37 CFR § 1.75(c), as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim(s), or amend the claim(s) to place the claim(s) in proper dependent form, or rewrite the claim(s) in independent form.
Regarding claim 74, the claim is dependent upon claim 73. The subject matter in claim 73 is drawn a limited embodiment of instant variables R21-R23. The subject matter in claim 74 is a further limited embodiment of R21-R23.
The scope of claim 74 is broader than scope of claim 73 because claim 74 uses “comprises” language, which is open-ended, while claim 73 uses “are” language, which is closed-ended. Because the scope of claim 74 is broader than claim 73, the claim failed to further limit the subject matter thereof, and fail to comply with the formal requirements set forth in the fourth paragraph of 35 U.S.C § 112.
The Examiner suggests that the claims be amended in a manner such that the scope of claim 74 is commensurate with the scope of claim 73.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 67-73, 77, 78, and 80-90 are rejected under 35 U.S.C. 103 as being unpatentable over “Synthesis and reaction kinetics study of triphenyl phosphite”, hereinafter Mane.
Regarding claims 67-73, 78, 81-83, and 88-90:
Determining the scope and contents of the prior art:
Mane, for instance, teaches a process of making a phosphite ester by reacting phenol with phosphorus trichloride without solvent and catalyst. The reaction of phenol with phosphorus trichloride was carried out in a 0.014 m i.d., baffled mechanically agitated glass reaction, as shown below. Triphenyl phosphite was produced by the reaction of slight excess (8%-10%) of phenyl with phosphorus trichloride at a reaction temperature ranging from 45oC to 160oC. During the reaction, hydrogen chloride gas was generated as a reaction byproduct, which was later removed by nitrogen sparging. After completion of reaction, the reaction mixture was refluxed at 10 mmHg pressure to remove dissolved hydrochloric acid in the reaction mixture. Vacuum distillation is also used to remove unreacted phenol. The reaction time was 17h, and the highest yield of triphenyl phosphite was 98.5% (which means 1.5% of coproducts) when the reaction temperature was at 160oC. The yield of triphenyl phosphite lowered to 79% when the reaction temperature was at 140oC, and lowered to 70.5% when the reaction temperature was at 120oC. The lower yields of triphenyl phosphite was due to increased presence of coproducts, such as monophenyl chlorophosphite and diphenyl chlorophosphite, caused by lower reaction temperatures. Phenol was reacted completely during the abovementioned reaction.
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140
270
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(pg. 99)
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340
664
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(pg. 100)
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320
652
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(pg. 100, Fig. 1)
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84
676
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(pg. 101)
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122
680
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(pg. 101)
Ascertaining of the difference between the prior art and the claim at issue:
Mane, for instance, did not explicitly teach a molar ratio of from 2.3 to less than about 3 of phenol and phosphorus trichloride, respectively.
Finding of prima facie obviousness --- rationale and motivation:
The Examiner finds that it would have been obvious for a person of ordinary skill in the art to modify the molar ratio of from 2.3 to about 5 of phenol and phosphorus trichloride in order to increase the yield of the process of Mane via routine optimization.
In addition, the Examiner does not find the abovementioned molar ratio as result-effective variable because the Applicant fails to demonstrate this parameter to impart any unexpected or novel aspect to the instant process (i.e. no comparative example). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. Accordingly, this parameter is viewed as routine experimentation to optimize the instant process, and not a patentable distinction.
Regarding claims 84-87:
Determining the scope and contents of the prior art:
Mane, for instance, teaches the abovementioned process.
Ascertaining of the difference between the prior art and the claim at issue:
Mane, for instance, did not explicitly teach the amount of the abovementioned coproducts in an amount of about 2 wt.% or more to about 4 w.% or less; or an amount of about 7 wt.% or more to about 12 wt. % or less.
In addition, Mane, for instance, did not explicitly teach a chloride content of from about 3,000 ppm to about 15,000 ppm or from about 10,000 ppm to about 15,000 ppm.
Finding of prima facie obviousness --- rationale and motivation:
The Examiner does not find the abovementioned amounts of coproducts or the abovementioned chloride content as result-effective variables because the Applicant fails to demonstrate these parameters to impart any unexpected or novel aspect to the instant process (i.e. no comparative example). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. Accordingly, these parameters are viewed as routine experimentation to optimize the instant process, and not a patentable distinction.
Regarding claims 77 and 80:
Determining the scope and contents of the prior art:
Mane, for instance, teaches the abovementioned process.
Ascertaining of the difference between the prior art and the claim at issue:
Mane, for instance, did not explicitly teach a coproduct having the same structure as the compound of instant formula (I), wherein instant variable Y is -OH.
Finding of prima facie obviousness --- rationale and motivation:
According to paragraphs 00111, 00114, and 00115 of the instant specification, the compound of instant formula (I), wherein instant variable Y is -OH, is the result of phosphite ester hydrolysis caused by the moisture content of the reactants. The Examiner finds the compound of instant formula (I), wherein instant variable Y is -OH, is an inherent coproduct of the process of Mane because the phosphite ester taught by Mane is also prone to hydrolysis caused by the moisture content of the reactants. MPEP 2112(II) and (III) indicated that inherent feature such as the abovementioned hydrolysis product of the phosphite ester needs not be recognized by the process of Mane at the time of the invention.
Claims 67-70, 72-76, 78, 79, and 81-89 are rejected under 35 U.S.C. 103 as being unpatentable over “Development and Scale-up of the Rapid Synthesis of Triphenyl Phosphites in Continuous Flow”, hereinafter Mao. See IDS filed 3/29/2023.
Regarding claims 67-70, 72-76, 78, 79, and 81-89:
Determining the scope and contents of the prior art:
Mao, for instance, teaches a process of making a phosphite ester by reacting alkyl-substituted phenol with phosphorus trichloride at a reaction temperature ranging from 60oC and 90oC with a yield of the alkyl substituted triphenyl phosphite ester ranging from 48% to 91%.
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424
910
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(pg. 9504, Scheme 1)
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924
734
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(pg. 9505, Table 3)
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350
524
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(pg. 9506, Table 4 Compounds 3a-3i)
Ascertaining of the difference between the prior art and the claim at issue:
Mao, for instance, did not explicitly teach a molar ratio of from 2.3 to less than about 3 of phenol and phosphorus trichloride, respectively.
Mao, for instance, did not explicitly teaches the amount of unreacted phenol in the reaction product as 1.5 wt.% or less.
Mao, for instance, did not explicitly teach the amount of the compound of instant formula (I) in an amount of about 0.3 wt.% or more to about 15 wt.% or less; in an amount of about 2 wt.% or more to about 4 w.% or less; or an amount of about 7 wt.% or more to about 12 wt. % or less.
Mao, for instance, did not explicitly teach a chloride content of from about 3,000 ppm to about 15,000 ppm or from about 10,000 ppm to about 15,000 ppm.
Finding of prima facie obviousness --- rationale and motivation:
The Examiner does not find the abovementioned molar ratio, the wt.%, and the chlorine content as result-effective variables because the Applicant fails to demonstrate these parameters to impart any unexpected or novel aspect to the instant process (i.e. no comparative example). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. Accordingly, these parameters are viewed as routine experimentation to optimize the yield of the instant process, and not a patentable distinction.
Claim Objections
Claims 78-80 are objected to because of the following informalities:
Regarding claims 78-80, the claims recite the phrase, “Z is as defined above”. Such expression can be clarified by reciting -- Z is as defined in claim 67 --.
Appropriate correction is required.
Conclusion
Claims 67-90 are rejected.
Claims 78-80 are objected.
Claims 1-66 are cancelled.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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