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 USC § 101
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.
Claims 1-18 are rejected under 35 U.S.C. 101 because the claimed invention, individually and as an ordered combination, is directed to mathematical concepts without significantly more. The claim(s) recite(s) mathematical concepts (steps a, b, e) to determine a percentage of r-PET within a given material M (Step 2A, Prong 1).
This judicial exception is not integrated into a practical application because there is nothing additional beyond the steps that integrates the abstract idea as in informing particular application by way of the calculated percentage of r-PET found for a given material M (Step 2A, Prong 2).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because step c is drawn to insignificant extra-solution activity wherein providing a material for analysis is a ubiquitous step that would always be required and is not particular to the present abstract idea at-hand. Further, step d is drawn to a data gathering step that is accomplished by way of well-known analytical chemistry techniques (*see below exemplary prior art to the well-understood, routine, and conventional analytical chemistry techniques recited herein) for substance identification/molecular characterization and quantitation (Step 2B).
The dependents claims do not provide particular integration or significantly more beyond the idea of assessing a percentage of r-PET in a given material by mathematical calculation.
The dependent claims are drawn to definition of the compositional weights to the at least one PET of the reference material, solubility of the material M, as well as providing choosing of ones of those the analytical chemistry techniques (NMR, 1H-NMR [proton NMR]) , data gathering therewith the techniques (‘acquiring spectrum’) and providing further, additional mathematical concepts (i.e. further abstract ideas) in the various ‘calculations’ and ‘determinations’ of the molar ratio(s), and molar percentage(s) provided therein.
This does not provide particular integration or significantly more than the abstract idea(s) at-hand.
*See, for example: US 2017/0003264, US 2015/0260695, US 2012/0262178, US 2011/0068262, US 2011/0001477, US 2008/0188003, US 2007/0055456, US 2007/0055456, US 2004/0071860, US 2002/0173920, USPN 5,538,643.
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 2-4 and 6-18 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.
Throughout the above-cited claims, the language of “preferably,” “more preferably,” “even more preferably,” and “in particular” (with respect to ‘a peak’ as in cls. 12-18) present indefinite metes and bounds to the claims.
It appears Applicant may desire additional dependent claims that provide further delineations from an initial, broader point.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation “at least partially soluble”, and the claim also recites “totally soluble” which is the narrower statement of the range/limitation as well as providing a genus organic solvent as well as species of organic solvents. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim 11 is likewise rejected under 35 USC 112 b/2nd for the use of “more preferably.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL N TURK whose telephone number is (571)272-8914. The examiner can normally be reached M-F 930-630.
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/NEIL N TURK/ Primary Examiner, Art Unit 1798
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