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 .
Response to Arguments
In their response dated 11/19/2025 the applicants argued anticipation rejection over the teaching of Takahashi as applied in the office action dated 8/19/2025.
The applicants argued in the light of the amendment to independent claims as well as newly added claims. The arguments were as follows:
Citing In re Petering case law and MPEP 2131.02, Ex parte A, applicants argued that Example 3 is the only one that includes both the antioxidants which are outside of the scope of claimed invention. Specifically, incorporating narrower range would not allow one of ordinary skill in the art to envisage a combination of a polymeric substance and organic compound based on the generic disclosure.
Examiner disagrees: With respect to the anticipation rejection, MPEP 2131 states that a claim is anticipated only if each and every element as set form in the claims is found either expressly or inherently described in a single reference”. The MPEP does not limit the teachings to the examples, but entire disclosure has to be considered. Having said that, applicant’s independent claims only require generically, a carbodiimide compound A, a phosphite antioxidant B and hindered phenol antioxidant C. The ranges disclosed in Takahashi encompass claimed ranges in its entirety, wherein the amounts of each component are claimed by Takahashi.
It should be noted that while reliance on case laws is common during the process of examination, one should ensure that the case laws are actually relevant to the art at hand.
In re Petering was directed to a very specific compound having very specific functional groups, which impart metabolite activity, for example competitively active riboflavin. The board affirmed the examiner’s position because applicants failed to submit a verified affidavit showing unusual or unforeseen properties to overcome prior art homologs. Board further indicated that the formula is not as broad and the range of selection not as great as appellants would make it appear. The board affirmed examiner’s rejection, which was then further affirmed by CCPA. The compounds in both cases were defined including all substituents.
“It is our opinion that one skilled in this art would, on reading the Karrer patent, at once envisage each member of this limited class, even though this skilled person might not at once define in his mind the formal boundaries of the class as we have done here.”
This is a very different from the generic genus recitation of the independent claims.
Ex Parte A, was focused on unexpected superior activity (enhanced therapeutic effect against bacteria) for a claimed compound disclosed within boarder reference. While applicants cite MPEP 2131.02, independent claim do not have genus-species situations as implied in the response.
Remaining cases of Net Moneyin Inc. v. Verisign, Finisar Corp.v. DirectTV are irrelevant as different principles apply to make money transactions and selections from databases, where single code can make big difference.
In re Arkley establishes that invention to be anticipated, the prior art reference must clearly and equivocally disclosed the claimed invention or direct a skilled artisan to it without requiring “picking and choosing” or combining separate unrelated disclosures from different parts of the reference to piece together a claim. The reference must directly teach the entire claimed invention as a whole, meaning not just examples. At the same time the applicants failed to indicate what it is that the examiner is picking and choosing from different parts of the reference, especially when all components required by the instant invention are disclosed and claimed by Takahashi to make one polyester composition.
While applicants argued that there is no anticipatory example, it is clear from the case law cited by the applicants themselves that the anticipation rises from the reference as a whole, just as the invention is claimed as a whole. The examples, are merely examples and by no means limit the invention disclosed by Takahashi.
Consequently applicant’s arguments are not persuasive and all rejections of record are restated. Additionally, newly added claims will also be rejected if new references are required to reject new claims such are necessitated by amendment.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Takahashi (US 2005/0032947 submitted by the applicants on 6/2025).
With respect to claim 1, Takahashi discloses additive for curing thermoplastic polyesters (Abstract). The additive comprises carbodiimide (A) and combination of antioxidants (B). Total amount of antioxidants is 0.1-20 parts per 100 parts of carbodiimide (claim 3), wherein antioxidant is a mixture of hindered phenol antioxidant and phosphorus based antioxidant (claim 5). The ratio of phenolic antioxidant to phosphorus containing antioxidant is 1:5 to 5:1 [0062] which encompasses claimed ratio of 1:2. As such if content of phenolic antioxidant is 0.1-10 parts (meets the claimed amount of phenolic antioxidant) then the content of phosphorus containing antioxidant is 10-0.1 parts [0061] such that the total content does not exceed 20 parts by weight to avoid lowering of the reaction rate in carbodiimide synthesis or making antioxidant barely compatible with carbodiimide compound [0061].
With respect to claims 4, 18, 21 and 22, Example 3 of Takahashi discloses using 4,4’-dicyclohexylmethane diisocyanate as the compound used to make carbodiimide [0143]. Other isocyanates are disclosed in [0043] include diphenylmethane diisocyanate, tetramethylxylylene diisocyanate, xylylene diisocyanate, isophrone diisocyanate and the like. Takahashi clearly states that mixtures of diisocyanates can be utilized, where term “mixture” inherently means 2 or more.
With respect to claims 5 and 6, both antioxidants utilized in Example 3 of Takahashi comprise pentaerythritol [0143].
With respect to claims 7-9, as it was mentioned in the Abstract, the carbodiimide composition is added to a resin. As described in [0071] the resin is ester group containing resin, polyesters [0072, 0074], polyester polyols [0073] including biodegradable resins [0077], wherein the composition is addressed in rejection of claim 1 above.
With respect to claims 10-12, examples of Takahashi disclose making films using twin screw extruder.
With respect to claims 13 and 14, instant specification states that the carbodiimide composition [0006] is capable of controlling foaming in a resin during molding. To achieve that compounds having pentaerythritol structure are preferred [0032]. Specifically it is the combination of the antioxidants to which such foam control is attributed [0036]. There is nothing else disclosed in the instant specification which would control the foaming of the molding composition. As such the foam control is viewed as inherent property which arises from the combination of the antioxidants used with the carbodiimide. Since Takahashi utilizes the same antioxidants (literally) and the same isocyanate compound, the composition would inherently be a foam control agent which in turn controls foaming during molding.
It should be further noted that a discovery of a new property or use of previously known composition, even if unobvious from prior art, cannot impart patentability to claims to a known composition. In re Spada 15 USPQ2d 1655 (CAFC 1990).
With respect to claims 15 and 16, carbodiimide compound Takahashi is end-capped [0046]. The terminal group can be hydroxy group, amine group, a carboxy group, anhydride group.
With respect to claim 17, carbodiimidization catalyst [0047-0048] includes 3-methyl-1-phenyl-2-phosphorene-1-oxide, 1-phenyl-2-phoephorene-1-oxide, 1-ethyl-2-phosphorene-1-oxide and the like with 3-methyl-1-phenyl-2-phosphorene-1-oxide being preferred. Examples 1- 3 directed at synthesis of carbodiimide compound utilizes 0.5 part of catalyst per 100 parts of diisocyanate compound [0140-0144].
With respect to claims 19 and 20, the phosphite antioxidant of Takahashi is one of formula 1 and one that is particularly preferred is bis(2,6-di-t-butyl-4-methylphenyl)pentaerythritol diphosphite [0057] and hindered phenol antioxidant [0059] is selected from 4,4’-methylene-bis-(2,6-di-t-butylphenol), octadecyl 3-(3,5-di-t-butyl-4-hydroxyphenyl)propionate, pentaerythritoltetrakis [3-(3,5—di-t-butyl-4-hydroxyphenyl)propionate], and the like, all listed within instant claim 19.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767
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