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
Receipt is acknowledged of the Information Disclosure Statement filed 02 August 2023. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Election/Restriction
Applicant’s election with traverse of Group I (claims 1-4, 6, 7, 13, 17, 21, 23, 26, and 28) and Species of a 6-membered ring (located in paragraph [0066] with Compound 1) in the reply filed on 24 February 2026 is acknowledged.
Claims 34, 36, 38, 39, 41, 47, 52-54, and 62 are withdrawn from consideration from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-4, 6, 7, 13, 17, 21, 23, 26, and 28 are under examination and the requirement for restriction is made final.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6-7, 13, 21, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Bort (WO-2020161308-A1).
Please note: The paragraph citations correspond to the English language equivalent US-20220125923-A1.
With regard to claims 1-4, Bort et al. teaches a compound comprising the following structure (Formula IV, para [0106]):
PNG
media_image1.png
348
672
media_image1.png
Greyscale
Wherein E is a straight or branched C1-C10 alkyl or alkoxy chain, a cycloalkyl or aryl group, optionally comprising one or more heteroatoms selected from N, O or S, optionally integrating or substituted with one or more substituents independently selected from halogen atoms, and anhydride, carboxy, nitrile, nitro, thio, amino, amido, aryl, heteroaryl, hydroxyl, ester, carboxylic acid or carboxylate groups (para [0108]); W' represents a CH2 group or an oxygen (para [0016]); X, X',X'',X''', Y', Y'', Y''' are independently selected from H, halogen atoms, alkoxy, and alkyl groups (para [0014]); U and U' identical or differently represent a NH group (para [0017]); R represents H (para [0019]); p and q are integers between 0 and 6 (para [0020]). The formula creates a structure containing an identical core structure (claimed A and B) and overlapping genus to arrive at the claimed structure of Formula I and Ia (claimed R1,R2,R3,R4, Q, and Z).
Bort et al. does not teach the claimed method to the degree of specificity as to be anticipatory.
With regard to the structure, it would have been prima facie obvious to one of ordinary skill in the art at the time of Applicant's invention to modify the teachings of Bort et al. by substituting the overlapping genus in the substituents to arrive at the claimed compounds of general formula I. The reference teaches an identical core structure and overlapping various functional groups to modify. MPEP 2144.09 (I) states “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In rePayne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In rePapesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In reDillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990).
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art, as evidenced by the references, especially in the absence of evidence to the contrary.
With regard to claims 6-7, Bort et al. teaches that X, X’,X’’,X’’’,Y,Y’,Y’’, and Y’’’ (which correspond to R1,R2,R3,R4) represent identical or differently halogen atoms, alkoxy, and alkyl groups (para [0014]), these functional groups overlap the specific claimed specie. Bort et al. further teaches X in the para-position of the phenyl ring is preferably hydrogen and halogen atoms (para [0040]); and further teaches that the preferred halogens are fluorine, chlorine, or bromine (para [0064]).
With regard to the overlapping genera, it would have been prima facie obvious to one of ordinary skill in the art at the time of Applicant's invention to modify the teachings of Bort et al. by substituting a fluorine for a hydrogen in the para-position of the phenyl ring to arrive at the claimed compounds of general formula I. The skilled artisan would predict that such a substitution of both hydrogen and fluorine in the same positions lead to the same activity. MPEP 2144.09 (I) states “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities.”.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art, as evidenced by the references, especially in the absence of evidence to the contrary.
With regard to claim 13, Bort et al teaches that E is a straight C1-C10 alkyl or alkoxy, optionally comprising one or more heteroatoms (N, O, S) and optionally substituted by one or more substituents (halogen, carbonyl, etc.) (which corresponds to Z, para [0108]), and W is an oxygen (which corresponds to Q, para [0016]); thereby meeting the claimed limitation.
With regard to claim 21, Bort et al. teaches the compounds can be separately or in any combination (para [0027]).
With regard to claim 23, Bort et al. teaches the compounds can comprises inert diluents (e.g. polyethylene glycol, fatty acid, oils, and mixtures thereof) which can be formulated in liquid solutions (para [0081] and [0088]).
Claims 26 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Bort (WO-2020161308-A1). as applied to claims 1-4, 6, 7, 13, 21, 23 above, and further in view of Wei (US-20190127620-A1).
The teachings of Bort et al. is disclosed above.
With regard to claim 26, although Bort et al. discloses the use of diluents (e.g. fatty acids), the reference fails to specify the concentration ranges for these components.
In the same field of endeavor, Wei teaches a composite comprising a phase change material and a polymer (para [0006]). Specifically, Wei teaches by selecting two or more different phase change materials and forming a mixture, the temperature stabilizing range of the phase-change material can be precisely adjusted for any desired application (para [0017]). Wei further teaches the suitable phase change material include various organics, such as hydrocarbons, fatty acids, fatty alcohols, waxes, oils, and mixtures thereof (para [0020]).
Furthermore, Wei teaches the composition comprises 1 to 95 wt. % of the first phase-change material and 5 to 95 wt. % of the second phase-change material, based on the total weight of the phase-change composition (para [0023]). This would allow for one to be the fatty acid claimed and the other to be the organic phase change material which would overlap the concentration ranges.
With regard to the concentration, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to combine the components in the appropriate proportions to provide desired temperature-stability and application in view of Wei’s teaching. The cited references collectively teach a blend of phase change materials, fatty acids, and hydrocarbons. The person having ordinary skill in the art would expect such practice and combination would improve workability and overall quality of Bort’s composition.
With regard to claim 28, Bort et al. fails to teach a polymer solution or film in which the compound is dispersed within.
In the same field of endeavor, Wei teaches the composition comprising a layer of polymer film, wherein the coating comprises a phase change material (paras. [0043] and [0044]). Wei further teaches that the layer is effective in reducing or preventing the migration of the phase change material composition (para [0042]).
With regard to the film, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to formulate a composition incorporating a polymer film as taught by Wei. For doing so, the inclusion of the polymer film can enhance the reducing and migration of the phase change material. Furthermore, the cited references collectively teach a blend of overlapping phase change materials (fatty acids, hydrocarbons, oils). The person having ordinary skill in the art would expect such practice and combination would improve the phase change material stability and longevity.
Allowable Subject Matter
Claim 17 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Reasons for Allowance
The following is an examiner’s statement of reason for allowance:
With regard to claim 17, the subject matter which is considered to distinguish from the closet prior art of record, Bort et al. (WO-2020161308-A1). The prior art of record generically disclose a chemical core structure with overlapping substituent groups, it fails to teach or suggest the specifically recited compounds of Claim 17 with the requisite degree of specificity required to establish a prima facie case of anticipation or obviousness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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, Angela Brown-Pettigrew can be reached at 571-272-2817. 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.
/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
Prosecution Insights