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 .
Rejections
Claim Rejections - 35 USC § 112
1. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
2. Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the disclosed substituents, does not reasonably provide enablement for all of the substituents encompassed by “substuted”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
A. The instant claim 5 recites “substituted” without specifying the substituents. Therefore, the claims encompass all possible substituents. The instantly claimed “substituted” reads on an infinite number of compounds resulting from the potentially infinite number of substitutions which can be performed on the recited compounds. In re Wands has 8 criteria, (MPEP 2164.01(a)), as shown below.
(A)The breadth of the claims;
(B)The nature of the invention;
(C)The state of the prior art;
(D)The level of one of ordinary skill;
(E)The level of predictability in the art;
(F)The amount of direction provided by the inventor;
(G)The existence of working examples; and
(H)The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
It is noted that the instant claims read on all potential substitutions of the recited compounds which encompasses an infinite number of compounds (Wands factors A and B). The specification does not describe how to make all such substituents, how to add them to the claimed compounds, nor how to select those substituents from the infinite list thereof which will function as required in the instant invention (Wands factors B, F, G). It would require an infinite amount of experimentation to determine how to make all of the substituents encompassed by the instant claims and another infinite amount of experimentation to determine which of these substituted compounds would function in the instantly claimed invention as required (Wands factors B and H). Chemistry is an unpredictable art (Wands factors B and E). The ordinary skilled artisan has not imagined nor figured out how to make all of the substitutions encompassed by the instant claim of “substituted” yet (Wands factors B, C, D, E, F, G, and H). The enabling disclosure is not commensurate with the full scope of the claimed “substituted”.
See Sitrick v Dreamworks, LLC (Fed Cir, 2007-1174, 2/1/2008), particularly
“Before MICHEL, Chief Judge, RADER and MOORE, Circuit Judges.
MOORE, Circuit Judge.
112(1) Enablement - The enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation
We review the grant of summary judgment de novo. LiebeI-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1377 (Fed. Cir. 2007). Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). Whether a claim satisfies the enablement requirement of 35 U.S.C. § 112, ¶ 1 is a question of law, reviewed de novo, based on underlying facts, which are reviewed for clear error. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003). The evidentiary burden to show facts supporting a conclusion of invalidity is one of clear and convincing evidence because a patent is presumed valid. Id. The “enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.” Id. at 1244.
112(1) Enablement - The full scope of the claimed invention must be enabled.
A patentee who chooses broad claim language must make sure the broad claims are fully enabled.
The full scope of the claimed invention must be enabled. See Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1285 (Fed. Cir. 2007). The rationale for this statutory requirement is straightforward. Enabling the full scope of each claim is “part of the quid pro quo of the patent bargain.” AK Steel, 344 F.3d at 1244. A patentee who chooses broad claim language must make sure the broad claims are fully enabled. “The scope of the claims must be less than or equal to the scope of the enablement” to “ensure[] that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.” Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195-96 (Fed. Cir. 1999).”
Claim Rejections - 35 USC § 102
3. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
4. Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. No. 5306758 Pellerite.
Regarding claims 1-12:
Pellerite, column 14, lines 24-40, particularly noting the compound of formula (II) in which m=10, falls within the scope of the instantly claimed surface treatment agent. At m=10, the molecular weight is relatively small such that the molecular weight distribution is expected to be relatively small also. No polymer has a polydispersity of exactly 1. The relatively small molecules of Pellerite’s formula (II) would have been expected to necessarily and inherently have a molecular weight distribution within the range of the instant claim 1 because of its relatively low molecular weight. See MPEP 2112. The instantly claimed fluorooxyalkylene group-containing polymer does not exclude the amide group of Pellerite’s formula (II) and therefore encompasses it.
The molecular weight of Pellerite’s formula (II) is 2045 g/mol which falls within the scope of the instant claim 2.
Pellerite’s formula (II) contains the moiety of the instant claim 3 and falls within the scope of the instant claims 4-6. Furthermore, the claims further describe the compounds of the instant claims 4-6 but do not require these compounds to be chosen. The prior art further reads on the instant claims 4-6 for this reason also.
Pellerite’s formula (I) of column 10, lines 31-46 falls within the scope of the instant claims 1-7.
It is expected that the compounds of Pellerite which are discussed above necessarily and inherently give the properties of the instant claim 8 because they are the same compounds as required by the instant claims and the same compounds are expected to give the same or similar properties. See MPEP 2112.
The Krytox polyfluoropolyether fluids of Pellerite, column 10, lines 31-34 fall wihtint eh scope of the fluorooxyalkylene group-containing polymer of the instant claim 9.
The Freon solvent of Pellerite, column 10, lines 49-51 falls within the scope of the instant claim 10.
Pellerite, column 2, lines 31-39 discloses coating compositions that are crosslinked to form low-surface energy liners which falls within the scope of the instantly claimed surface treatment agents. The coatings are applied to substrates which are the article of the instant claim 11, noting the coated PET film of Pellerite, column 14, lines 56-57, which falls within the scope of at least the hard coat film, high hardness film, and antireflection film of the instant claim 12.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 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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/PATRICK D NILAND/ Primary Examiner, Art Unit 1762