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 .
Claims 1 and 2 are currently pending.
Priority
The instant application claims priority as follows:
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Specification Objection - Title
Applicant is reminded of the proper content of the title of the invention.
The title of the invention should be brief, but technically accurate and descriptive. See 37 CFR 1.72(a) and MPEP § 606. The title of the invention should be more descriptive of what is claimed. Currently, the title does not indicate the type of compounds of the invention. A new title is required that is clearly indicative of the invention to which the claims are directed. See MPEP 606.01.
Specification Objection - Abstract
Applicant is reminded of the proper content of an abstract of the disclosure.
With regard particularly to chemical patents, for compounds or compositions, the general nature of the compound or composition should be given as well as the use thereof, e.g., The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics. Exemplification of a species could be illustrative of members of the class. For processes, the reactions, reagents and process conditions should be stated, generally illustrated by a single example, unless variations are necessary. See MPEP § 608.01(b), Section B.
The abstract of the disclosure is objected to because it fails to exemplify any members or formulae illustrative of its class. Correction is required. See MPEP § 608.01(b). A depiction of formula (I) will obviate this objection.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a written description rejection.
The instant claims are drawn to
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The starting material and product made encompass any groups of any length and size, any number of atoms and bonds, as long as the product contains an amide, a thiophene and a polymer group, and the starting material contains at least a nitrile group, which is converted to an amide via hydrolysis. The claim recites “hueing agent”, however, the phrase “amide-containing, polymeric thiophene” appears to set forth all of the structural limitations of the product made.
Vas-Cath Inc. V. Mahurkar, 19 USPQ2d 1111, states that Applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.
To satisfy the written description requirement, a specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003). Where, as here, the claims cover a broad genus, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are “representative of the full variety or scope of the genus,” or by the establishment of “a reasonable structure-function correlation.” AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300 (Fed. Cir. 2014) (Claims directed to a functionally defined genus of antibodies were not 36 supported by a disclosure that “only describe[d] one type of structurally similar antibodies” that “are not representative of the full variety or scope of the genus.”).
“The examples and description should be of sufficient scope as to justify the scope of the claims”. See MPEP § 608.01(p). If a representative number of adequately described species are not disclosed for a genus, the claim to that genus must be rejected as lacking adequate written description under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1 (MPEP 2163).
In the instant case, the specification discloses producing formula I
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, and exemplifies only one product with its synthesis at page 50 of the specification:
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.
This is an extremely small portion of the genus of starting materials and products claimed for the reaction. The species described in the specification are not a representative sample of the claimed genus:
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The claimed genus encompasses a method of making such as the following:
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. See Xu et al. (Adv. Mater. 2018, 30, 1703973).
However, the species of product produced in this application are close together in structure (i.e. formula I) and the nitrile starting material of the specification has a particular structure in relation to formula I.
In conclusion: (i) substantial structural variation exists in the genus/subgenus embraced by the claims; (ii) disclosure of species supporting the genus is limited to only 1 product/reaction reduced to practice, which scope is not commensurate with the scope of genus/subgenus claimed.
The description requirement of the patent statute 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 does not describe in sufficient detail the genus of compounds in the claims and how to use them 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.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xu et al. (Adv. Mater. 2018, 30, 1703973).
The claims recite:
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The claim interpretation allows for “the amide is formed via hydrolysis of the nitrile” to be different from the hydrazine amide in the final product of the specification.
The prior art teaches making an amide containing polymeric thiophene formed via hydrolysis of a nitrile under basic conditions as follows:
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Basic conditions are formed in KOH, the polymeric chain is polyethylene in C8H17.
See page 8 of the Supporting Information.
Instant claims 14-18 recite “hueing agent” in the preamble of the claims. The term “hueing agent” is considered an intended use of the amide-containing, polymeric thiophene defined in the claims. See MPEP 2111.02 (II) regarding preamble statements reciting purpose or intended use: “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”.
In the instant case, the body of claim 1 intrinsically sets forth all of the
limitations of the compound of claim 1. Accordingly, any compound disclosed in the prior art having the elements recited in the body of the instant claim 1 is considered to be capable of the intended use as a “hueing agent”.
Conclusion
Claims 1 and 2 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-4:30pm.
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/VALERIE RODRIGUEZ-GARCIA/ Primary Examiner, Art Unit 1621