DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per preliminary amendment dated 7/28/23, claims 1-9 are currently pending in the application.
Applicant’s election without traverse of Group I invention, encompassing claims 1-4, in the reply filed on 5/26/26 is acknowledged. Claims 5-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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, 2 and 4 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.
Claim 1 recites the following:
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The claim is indefinite because on the one hand, the wherein clause requires a lactic acid residue to be necessarily present, and on the other hand, the remaining valencies, i.e., other than those linking to oxygen atom, may be all hydroxy groups.
According to paragraph [0020] in the instant disclosure, an embodiment of the aluminum crosslinking agent is drawn to the following compound-
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Furthermore, according to paragraph [0027], it is “preferable” that lactic acid residues be bonded to one or more of the remaining valencies. That is, the disclosure allows for all of R1 to R3 being hydroxyl groups in formula (1A).
Thus, claim 1 lacks clarity in the embodiment where the remaining valencies are all hydroxy groups, because the claimed aluminum lactate compound is also required to contain a lactic acid residue. Claims 2 and 4 are subsumed by rejected base claim 1 and are therefore included in this rejection. For the purpose examination and applying prior art, in view of the disclosure, Examiner interprets the aluminum crosslinking agent of claim 1 to be a polynuclear aluminum lactate compound having a polynuclear aluminum structure, the polynuclear aluminum structure having a plurality of aluminum atoms polymerized through one oxygen atom and a degree of polymerization of 2 to 20, wherein lactic acid residues, hydroxyl groups, or both are bonded to the remaining valences of the aluminum atom.
Claim Rejections - 35 USC § 102 and 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Davison et al. (GB 888,666 A, of record).
Davison teaches the following compound:
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wherein, X is a pharmacologically active group and Y=hydroxyl or X, wherein X is be derived pharmacologically active substance. Disclosed small genus of pharmacologically active substance includes lactic acid (page 6, lines 66-108). In the disclosed compound, the degree of polymerization is 2. Per MPEP 2131.02 (A), “...when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named”. Ex Parte A, 17 USPQ2d 1716 (BPAI, 1990).
Regarding the recitation "An aluminum crosslinking agent for dip molding" in the preamble of claim 1, it is deemed to be a statement of purpose or intended use which is not seen to result in any structural difference between the claimed aluminum lactate compound and the compound within the scope of Davison. Hence the preamble fails to limit the claim. MPEP 2111.02.
In light of above, presently cited claims are anticipated by the reference.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Davison et al. (GB 888,666 A, of record),
The discussion on Davison from paragraph 7 above is incorporated herein by reference.
Although Davison is silent on a compound within the scope of the claimed invention in one single embodiment, given the teaching therein on lactic acid as a suitable pharmacologically active substance for providing the group X in the above disclosed compound, and the teaching that Y is hydroxyl or X, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for a compound wherein one or more of Y is X obtainable from lactic acid (obviates claim 3).
Regarding claim 4, Davison teaches compounds of overlapping scope. For instance, when two Y groups in the above disclosed compound are lactic acid residues, the molar ratio of aluminum atoms to lactic acid residues is 1:1 which falls within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
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