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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112 and § 101
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.
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.
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 8 and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, claim 8 recites the limitation "derivative thereof"; claim 11 recites the limitation "a modified polyoxyethylene derivative”.
Regarding the requirement for adequate written description of chemical entities, Applicant's attention is directed to the MPEP §2163. In particular, Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089, 118 S. Ct. 1548 (1998), holds that an adequate written description requires a precise definition, such as by structure, formula, chemical name, or physical properties, "not a mere wish or plan for obtaining the claimed chemical invention." Eli Lilly, 119 F.3d at 1566. The Federal Circuit has adopted the standard set forth in the Patent and Trademark Office (PTO) Guidelines for Examination of Patent Applications under the 35 U.S.C. 112.1 "Written Description" Requirement ("Guidelines"), 66 Fed. Reg. 1099 (Jan. 5, 2001), which state that the written description requirement can be met by "showing that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics," including, inter alia, "functional characteristics when coupled with a known or disclosed correlation between function and structure..." Enzo Biochem, Inc. v. Gen-Probe Inc., 296 F.3d 316, 1324-25 (Fed. Cir. 2002) (quoting Guidelines, 66 Fed. Reg. at 1106).
It is noted that the instant specification, applicants mention pyrrolidone and a derivative thereof [pg. 4, ln. 25; pg. 5, ln. 23; pg. 11, ln. 11-26; Ex. 5; Ex. 7; Table 1]; pyridinium and a derivative thereof [pg. 4, ln. 25-26; pg. 5, ln. 23; pg. 11, ln. 11-26; Ex. 5; Ex. 7; Table 1]; and a modified polyoxyethylene derivative [pg. 5, ln. 4; pg. 5, ln. 26; pg. 13, ln. 9-24; Ex. 5; Ex. 7; Table 1], but specific derivatives are not listed. Therefore, a proper limiting definition of the term "derivative", which encompasses other undefined compounds has not been established. Additionally, applicants have failed to provide any further description of the various derivatives that would provide adequate written description of the compounds encompassed by the claim. Adequate written description requires a precise definition, such as by structure, formula, chemical name, or physical properties. Applicants provide no direction as to what subset of derivatives out of all possible derivatives that exist in the art would possess the required properties and be useful in the claimed invention. Furthermore, the structures of the particular derivatives disclosed in the specification are not representative of other species of derivatives, for example salts, polymers, or degradation products, encompassed by the genus. In the present case, the disclosure fails to describe the claimed compounds in a manner that complies with the written description requirement of 35 U.S.C. 112, 1st Paragraph.
Claims 8, 11 and 14-15 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 pre-AIA the applicant regards as the invention.
Regarding claim 8: The recited “derivative” in “derivative thereof” is indefinite since there is neither definition nor various species for said “pyrrolidone and a derivative thereof”; “pyridinium and a derivative thereof” in the specification. The metes and bounds of the scope of the invention is unclear.
Regarding claim 11: The recited “derivative” is indefinite since there is neither definition nor various species for said “modified polyoxyethylene derivative” in the specification. The metes and bounds of the scope of the invention is unclear.
Regarding claim 13: It is unclear if glass fiber is required to be coated by the composition of claim 1, or if anything coated with the composition of claim 1 corresponds to a glass fiber product, therefore claim 13 and dependent claims 14-15 are indefinite.
Claim 14 provides for the use of the glass fiber product of claim 13 but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 15 provides for the use of the epoxy resin composite material of claim 14 but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 15 recites the limitation "the field" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 14-15 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Allowable Subject Matter
Claims 1-7, 9-10 and 12 are allowable.
Claim 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Xu et al. (CN 113929316) [IDS 10/26/23] (English machine translation for citation) discloses glass fiber impregnating compositions containing water and having 5.5-7.5 mass% solids, wherein the solids comprise 5-28 mass% of silane coupling agent, 45-80 mass% of film forming agent, 5-16 mass% lubricant, 1-6 mass% surfactant, 1-8 mass% interface reinforcing agent, 1-6 mass% anti-aging agent, 1-5 mass% antifoaming agent, and 1-7 mass% pH regulator [abstract]. Xu et al. (CN ‘316) does not disclose 1-5 mass% of a leveling agent and 1-5 mass% of a wetting agent.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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