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 § 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.
Claims 1-3 and 9-11 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Kugele et al. US 4,711,920.
Regarding claims 1-3 and 9-11, Kugele discloses diester compound (col 6, line 42) with formula as shown below.
PNG
media_image1.png
51
193
media_image1.png
Greyscale
The compound as shown above, reads on the structural limitations of the required formula, where Ra, Rb, Rc, and Rd are H, Re is ethyl, m=1, n=0, R1 is C2 alkenylene, R2 is C4 alkyl, and where the overall residue has a molecular formula C30H44O12 which has an average Mn of 597 g/mol.
which meets the requirement of the following compound,
PNG
media_image2.png
190
391
media_image2.png
Greyscale
in which Y corresponds to the required as shown below:
PNG
media_image3.png
117
439
media_image3.png
Greyscale
Therefore, the invention as claimed is fully anticipated by Kugele as disclosing each limitation of the rejected claims as per discussion above.
Response to Arguments
Applicant’s arguments filed on 06/30/2026 with respect to claim(s) 1-11 which were rejected under 35 U.S.C. 102(a) (1) as anticipated by Turner, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant submits that the claimed structure and its specific Mn is a distinguishing feature and is associated with unexpected technical effects. As discussed above Kugele anticipates the required structure and its Mn and therefore the required structure is not novel. Since a chemical composition and its properties are inseparable, therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present, See MPEP 2112.01 I. and II. In the instant case the prior art compound would behave in a similar manner to remove surface defects or reduce leaching as observed by the instant specification.
Applicant’s amended structure does not recite a distinguishing feature over the compound provided by Kugele and therefore the rejection of the amended claims is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi (Riviere) Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
Prosecution Insights