Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objection
2. Objection is made to claims 3 and 27, because (1) claim 3 is terminated with two periods and (2) within claim 27, RZ (R superscript Z) does not agree the variable, RZ, within the formula (II).
Indefiniteness Rejection
3. 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.
4. Claims 3-5, 7-14, 20-29, 33-36, 38, and 40-43 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.
Firstly, with respect to claim 3, it is unclear how to interpret the alternative heating step within (II), since when only this alternative is operable, the claim appears to allow for reaction mixtures other than the one specified within independent claim 1.
Secondly, with respect to claims 27-29, there is a word omission after the second occurrence of “the” within line 1 of each claim.
Thirdly, with respect to claims 27 and 40, the use of “can” renders the claims indefinite, because the language denoted by “can” fails to constitute a definitive limitation. Furthermore, with respect to claim 40, the use of “may” renders the claim indefinite, because it is unclear if or to what extent the language denoted by “may” is optional.
Fourthly, regarding claim 28, the phrase "such as" (nine occurrences) renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Fifthly, regarding claim 28, the phrase "for example" renders the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). With respect to claim 33, for the same reason, the language within parentheses denoted by “e.g.” renders the claims indefinite.
Sixthly, with respect to claim 34, the multiple dependencies are improper, and claim 96 does not exist.
Seventhly, with respect to claim 38, it is unclear what constitutes “an industrial scale”; it cannot be determined what size of the scale is mandated by “industrial”.
Prior Art Rejection
5. 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
6. Claims 1-43 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/081931 A1 in view of EP 3473658 A1.
WO 2019/081 931 A1 discloses the production of polyether polycarbonate (see abstract), wherein epoxide (see page 15), corresponding to applicants’ epoxide, initiator, and carbon dioxide are polymerized in the presence of a catalyst (see pages 4-6), corresponding to applicants’ claimed formula (I), and a double metal cyanide catalyst (see pages 65-74), corresponding to applicants’ claimed double metal cyanide catalyst. Furthermore, the reference discloses steps of mixing the reaction components that correspond to instant claim 3 and the clams that depend on claim 3 (see abstract and pages 3, 5, 19, 21, 22, 24, 25, 28, and 39-41). Furthermore, continuous and discontinuous processing is disclosed within page 18. Also, the clamed weight ratio of one catalyst to the other is disclosed within page 42.
7. Though the primary reference discloses an initiator, the primary reference is silent regarding the use of a monofunctional initiator. However, the production of surfactants using an analogous reaction scheme to that of the primary reference was known at the time of invention. Furthermore, it was specifically known to produce these surfactants using monols having relatively long hydrocarbon chains, such as chains of 10 to 20 carbon atoms. The incorporation of these monols yields surfactants having desirable high HLB values (see abstract and pages 2 and 3 of the provided translation of the secondary reference. Accordingly, one seeking to produce a surfactant having advantageous characteristics, such as greater process and product control, of the process of the primary reference would have been motivated to utilize the monols of the secondary reference within the process of the primary reference, so as to obtain an improved process and surfactant property. Also, such a modification would have yielded the surfactant molecule and composition of claims 39-43 and 45.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/Primary Examiner, Art Unit 1765
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