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 .
Information Disclosure Statement
The listing of references in the specification, such as on page 1 of the current application, is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The specification (including the abstract and claims), and any amendments for applications, except as provided for in 37 CFR 1.821 through 1.825, must have text written plainly and legibly either by a typewriter or machine printer in a nonscript type font (e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of 6) in portrait orientation and presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition; and only a single column of text. See 37 CFR 1.52(a) and (b).
The application papers are objected to because:
The formulas for the R and A groups on page 9 are not fully legible.
Formula (ii) on page 10 is not fully legible.
Formula (ii) on page 11 is not fully legible.
The captions for the reactants of Scheme 1 on page 12 are not legible.
The captions for the reactants of Scheme 2 on page 13 are not legible.
The formula on the right for the R group at the bottom of page 13 is not fully legible.
The captions for phenalkamines A and B on page 14 are not legible.
The formula on the right for the R group at the bottom of page 14 is not fully legible.
The formulas for the Dimer Acid and Diethylene Triamine in Scheme 3 at the bottom of page 15 are not fully legible. The caption for the Diethylene Triamine is also not fully legible.
The formula for the bottom product of Scheme 3 at the bottom of page 15 is not fully legible.
The captions for the reactants and products of Schemes 4 and 5 on page 18 are not fully legible.
The formulas for the Dimer Acid and Diethylene Triamine in Example 1 on page 19 are not fully legible.
The formula for the bottom product of Example 1 on page 19 is not fully legible.
The captions for the reactants and products of Examples 2 and 3 on page 20 are not fully legible.
The captions for the reactants of Example 4 on page 21 are not legible.
The captions for the reactants of Example 5 on page 22 are not legible.
Applicant’s attention is additionally directed to the PG Publication for this application, U.S. PG Pub. No. 2024/0059645, which specifically identifies the illegible text within the abovementioned formulas, and should supply a legible substitute specification.
A legible substitute specification in compliance with 37 CFR 1.52(a) and (b) and 1.125 is required.
The disclosure is objected to because of the following informalities:
In line 3 of the second paragraph of page 1, “Such enduses” should be “such end uses”
In line 1 of the third paragraph of page 1, “compositions are capable” should be “compositions capable”
In line 1 of the last paragraph of page 1, “Phenalkamine are product” should be “Phenalkamines are products”
In line 2 of the last paragraph of page 1, “a” should be inserted prior to “high degree”
In line 1 of the first paragraph of page 2, “produce” should be “produced”
In line 3 of the first paragraph of page 2, “has main advantage” should be “has the main advantages”
In line 5 of the first paragraph of page 2, “presence of” should be “the presence of a “
In line 7 of the first paragraph of page 2, “due to side chain” should be “due to the side chain”
In line 8 of the first paragraph of page 2, “drawback” should be “drawbacks”
In line 10 of the first paragraph of page 2 “expose” should be “exposed”
In lines 1-2 of the second paragraph of page 2, “Polyamide series which are reaction product of higher polyamine and dimerized fatty acid to provide low to high viscosity products” is unclear and should be rewritten in clear English.
In line 3 of the second paragraph of page 2, “a” should be inserted prior to “very good combination”
In line 5 of the second paragraph of page 2, “makes” should be “making”
In lines 5-6 of the second paragraph of page 2, “main drawback” should be “the main drawbacks”
In line 6 of the second paragraph of page 2, “compare” should be “compared”
In line 1 of the third paragraph of page 2, “there is need” should be “there is a need”
In line 1 of the last paragraph of page 2, “is” should be inserted prior to “to provide”
In lines 4-5 of the last paragraph of page 3, “when temperature of the reaction mixture reached at a temperature 70°C to 80°C and followed by the stirring” should be “when the temperature of the reaction mixture reaches a temperature of 70°C to 80°C, followed by stirring”
In line 1 of the first paragraph of page 4, “upto” should be “down to” and “the inert” should just be “inert”
In lines 4-5 of the second paragraph of page 12, “when temperature of the reaction mixture reached at a temperature 70°C to 80°C and followed by the stirring” should be “when the temperature of the reaction mixture reaches a temperature of 70°C to 80°C, followed by stirring”
In line 6 of the second paragraph of page 12, “upto” should be “down to” and “the inert” should just be “inert”
In line 1 of the first paragraph of page 16, “fatty acid” should be “fatty acids”
In lines 8-9 of the first paragraph of page 16, “different acid with different proportion” should be “different acids in different proportions”.
In lines 9-10 of the first paragraph of page 16, “Diels Alder reaction in presence of catalyst to produced higher analog” should be “Diels-Alder reactions in the presence of a catalyst to produce higher analogs”
In line 11 of the first paragraph of page 16, “use” should be “used” and “mixture” should be “a mixture”
In line 4 of the third paragraph of page 16, “depends” should be “depending”
In lines 1-2 of the first paragraph of page 17, “when temperature of the reaction mixture reached to a temperature 70°C to 80°C” should be “when the temperature of the reaction mixture reaches a temperature of 70°C to 80°C”
In line 4 of the first paragraph of page 17, “raising temperature of reaction mixture” should be “raising the temperature of the reaction mixture”
In line 2 of the first paragraph of page 18, “inside chain” should be “inside the chain” and “is mixture” should be “is a mixture”
In line 3 of the first paragraph of page 18, “is major component” should be “is the major component”
In line 1 of the second paragraph of page 18, “synthesis” should be “syntheses”
In line 4 of the bottom paragraph of page 22, “Mix” should be “mixed”
In line 4 of Example 7 on page 24, “grind at Mill” should be “ground in the mill”
In line 3 of Example 8 on page 26, “grind at Mill” should be “ground in the mill”
In line 1 of Example 9 on page 30, “Sand” should be “sanded”
In general, the examples are inconsistent between the use of the passive voice and active voice and use irregular capitalization. Applicant should make appropriate corrections.
In lines 1-4 of the first paragraph of page 31, “Phenalkamine” should be “Phenalkamines”, “cured film” should be “the cured film”, “are tested” should be “is tested”, and the paragraph should end with a period.
In line 6 of page 32, “sand” should be “sanded”
In line 7 of page 32, “Apply Paint by Spray Application” should be “paint was applied by spray application”
In lines 8-9 of page 32 “After 7 days of ageing sealed the edges with Adhesive tape and Expose for the testing” is unclear and not in proper English.
In general, the explanations of the test methods are inconsistent between the use of the passive voice and active voice and use irregular capitalization. Applicant should make appropriate corrections.
Appropriate correction is required.
Claim Objections
The formula on the right for the R group of claim 2, formulas (ii) and (iv) of claim 3, and the formula on the bottom for the R group of claim 6, are not fully legible. Applicant’s attention is directed to U.S. PG Pub. No. 2024/0059645 which specifically identifies the illegible text in these formulas.
Claims 4, 9-12, and 15-17 are objected to because of the following informalities:
In lines 6-7 of claim 4, “when temperature of the reaction mixture reaches at a temperature 70°C to 80°C and followed by the stirring” should be “when the temperature of the reaction mixture reaches a temperature of 70°C to 80°C, followed by stirring”
In line 9 of claim 4, “upto” should be “down to”
In line 1 of claim 9, “said solvent step (c)” should be “said inert solvent of step (c)”
In line 1 of claim 10, “by process” should be “by a process”
In line 4 of claim 10, “azetropicmixture” should be “an azeotropic mixture”
In line 6 of claim 11, “reaction mixture” should be “the azeotropic mixture”
In line 4 of claim 12, “afford reaction mixture” should be “afford a reaction mixture”
In line 8 of claim 12, “raising temperature of reaction mixture” should be “raising the temperature of the reaction mixture”
In line 3 of claim 15, “Isophorondiamime” should be “isophorone diamine”
In line 4 of claim 15, “Menthanediamine” should be “methanediamine”
In line 1 of claim 16, “wherein mole ratio” should be “wherein the mole ratio”
In line 1 of claim 17, “wherein mole ratio” should be “wherein the mole ratio”
Appropriate correction is required.
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 1-19 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, 8-9, 11, 13-15, 19, and their dependent claims do not use proper Markush language. See MPEP 2117. The examiner recommends that “selected from” be amended to “selected from the group consisting of”. In claim 1, “and” should be inserted prior to “phosphates” for both the R group and the A group, and the “or” following “alkynyl;” deleted. In claim 8, “and” should be inserted prior to “tri methyl glycidyl ether triglycidyl of trimethalol propane”, and “and alike” should be deleted as discussed below. In claims 9, 11, 13-15, and 19, “alone or mixture thereof”, “alone or mixtures thereof”, “alone or in combination thereof”, and “alone or combination thereof” should be amended to “and combinations thereof” or “and mixtures thereof”.
In claim 4, there is no antecedent basis for “the stirring” in step (b) of the claim and “the inert solvent” in step (c) of the claim. The examiner recommends that “the” be deleted in both instances.
In claim 8, it is unclear what is meant by “and alike” at the end of the claim, and the scope of the claim cannot be ascertained because it includes elements not actually recited.
In claim 9, it is unclear what is meant by “and higher analogs” at the end of the claim, and the scope of the claim cannot be ascertained because it includes elements not actually recited.
In claim 10, “preferably” in line 3 of the claim renders the claim indefinite as it is unclear whether the limitations following “preferably” are part of the claim. For the purpose of examination, “preferably diethylene triamine” has been disregarded.
In claim 12, “i.e.” in line 3 of the claim renders the claim indefinite as it is unclear whether the limitations following “i.e.” are part of the claim. For the purpose of examination, “i.e. cardanol” has been disregarded.
Claim 13 recites “The process as claimed in claim 12, wherein said aldehyde of step (a)”, but the aldehyde is recited in step (b) of claim 12.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claims 8 and 11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 recites various epoxy resins for use in the process of claim 4 for the preparation of the phenalkamide curing agent of general formula (I). However, in order to obtain a phenalkamide of general formula (I), the epoxy resin must be a bisphenol A diglycidyl ether; the other recited epoxy resins will not produce a compound of general formula (I). Claim 8 therefore fails to further limit claim 4.
Claim 11 recites various polyamines for use in the process of claim 4 for the preparation of the phenalkamide curing agent of general formula (I). However, in order to obtain a phenalkamide of general formula (I), the polyethyleneamine must be diethylene triamine (DETA); the other recited polyamines will not produce a compound of general formula (I). Claim 11 therefore fails to further limit claim 4.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1-19 would be allowable if rewritten or amended to overcome the claim objections and the rejections set forth under 35 USC 112 in this office action.
The prior art does not teach or render obvious phenalkamides having the formula recited in claim 1. Lal (WO 2019/197359 A1) discloses phenalkamines prepared from cardanol, and teaches that they can be used as a curing agent for epoxy resins, where the epoxy resin can be a diglycidyl ether of bisphenol A (paragraph 30). In paragraph 49 Lal discloses that polyamides can be present as curing agents. However, Lal does not provide any indication that the cured product of the phenalkamine, polyamide, and epoxy resin would be a phenalkamide having the structure of general formula (I) in claim 1, noting that the formula of claim 1 requires 1 to 4 repeat units and does not allow for crosslinking, and does not indicate that the product would also be functional as a curing agent, since it is already a cured product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771