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 Objections
Claim 15 is objected to because of the following informalities: Claim 15 recites “Use of the composition” it appears it should read “A method of using…”. 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.
Claim 15 is 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 15 appears to be a method claim, but does not recite any positive steps, making the claim indefinite.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3-6, 8-10 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR-20010103644-A (hereafter the ‘644 patent).
Regarding claims 1, 3-6, 8-10 and 13
The ‘644 patent discloses a adding (i.e., mixing) diethyl ether to 2-adamantone to form a solution (Example 1).
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.
Claims 1-5 and 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over DE-202019101101-U1 (hereafter the ‘101 patent), in view of Hayato (JP-2017181697-A).
Regarding claims 1-5, 7-11 and 13
The ‘101 patent discloses a sprayable composition comprising one hydrocarbon that is gaseous (i.e., propellant or solvent B), at least one cycloalkane selected from the group of diamondoids and/or a diamondoid derivative, and a solvent such as acetone (i.e., not a hydrocarbon solvent) (title and abstract), which would be mixed.
The ‘101 patent discloses the use of 1-adamantol and adamantane (i.e., unsubstituted diamondoid) (claim 5).
Although the ‘101 patent does not disclose any substituted adamantane other than 1-adamantol, the ‘101 patent does disclose the use of adamantane derivatives. However, Hayato discloses that as substituted adamantanes that 1-adamantanecarboxylic is known (alicyclic skeleton-containing compound). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of the ‘101 patent by using or including 1-adamantanecarboxylic acid as an adamantane derivative, with a reasonable expectation of success, as suggested by Hayato.
It is noted that using two or three adamantane compounds is see as obvious, because combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness, see In re Kerkhoven, 205 U.S.P.Q. 1069.
Regarding claims 12, 14-15
The ‘101 patent discloses forming a film on the surface (i.e., object) for taking an optical measurement of the surface(claim 16).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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