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 U.S.C. § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
Claims 10, 14 & 15 are rejected under 35 U.S.C. § 101 as the claims are directed to non-statutory subject matter. Claims 10, 14 & 15 do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed as “use” claims that do not purport to claim a process, machine, manufacture or composition of matter. Therefore, claims 10, 14 & 15 fail to comply with 35 U.S.C § 101.
Claims 10, 14 & 15 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 10, 14 & 15 are further rejected under 35 U.S.C. § 112(b) for attempting to claim a use without any active, positive steps delimiting how the use is actually practiced. See MPEP § 2173.05(q).
Claim Rejections – 35 U.S.C. § 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.
Claims 2 – 15 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 claims 2, 4 & 11, when further limiting the preparation method for the invert emulsion, claims 2, 4 & 11 all recite the limitation of ‘…preparing in one step…” (p. 3, Claim 2, line 3; Claim 4, line 2; & p. 5, Claim 11, line 2). However, the contents of claims 2, 4 & 11 seem to indicate more than one step is necessary in the invention. Furthermore, the specification does not elaborate or define ‘preparing in one step’ or ‘one step’ and instead seems to contradict what is conventionally meant by ‘one step’ by detailing a Step 1 (p. 12, lines 1 – 11) and a Step 2 (p. 14, line 22 – p. 15, line 10). Additionally, ‘one step’ seems to contradict the ‘three-stage polymerization reaction’, it is unclear what a ‘step’ is intended to encompass.
Regarding claim 2, claim 2 is further rejected for failing to clearly detail what steps or actions are required to meet the limitation of ‘controlling an emulsifier system and an emulsification means’, and the specification does not provide any further clarification. Additionally, claim 2 further fails to clearly detail the difference between the ‘emulsifier system’ and the ‘emulsification means’. The specification fails to elaborate or identify the difference between said emulsifier system and said emulsification means.
Further, the term ‘means’ coupled with functional language & not modified with sufficient structure invokes 35 U.S.C. § 112(f). The specification fails to disclose any structure corresponding to the claimed ‘emulsification means’ for performing the recited function. Therefore, one of ordinary skill in the art would be unable to determine the full metes and bounds of the claim.
Regarding claims 3 – 15, claims 3 – 15 all depend from claim 2, directly or indirectly, and similarly inherit the indefiniteness of claim 2. Therefore, claims 3 – 15 fail to comply with 35 U.S.C. § 112(b).
In view of the rejections of claims 2 – 15 under 35 U.S.C. § 112, a rejection of claims 2 – 15 on the merits would require substantial speculation in view of the confusion and uncertainty arising from the outstanding issues identified above. Prior art rejections should not be based on considerable speculation or assumptions. See MPEP § 2173.06. Therefore, claims 2 – 15 have not been evaluated for patentability under 35 U.S.C. § 102 or § 103.
Claim Rejections – 35 U.S.C. § 102
Claim 1 is rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Cicchiello et al. (US 5,883,181 A).
Regarding claim 1, Cicchiello teaches inverse emulsions comprising at least two particle size distributions and methods of producing said inverse emulsions (col. 1, lines 41-45). Cicchiello employs the use of two emulsions (a microemulsion & a macroemulsion), wherein the microemulsion has a particle size distribution of most preferably less than 1,000 Angstroms (i.e., 100 nm) and the other emulsion has a particle size distribution of most preferably at least 2,000 Angstroms (i.e., 200 nm) greater than those in the microemulsion (col. 8, lines 34-57). Thus, Cicchiello teaches the two particle size distributions arise from the combination of an emulsion having a particle size distribution of 100 nm or less and an emulsion having a particle size distribution of 300 nm or greater.
Conclusion
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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