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 Rejections - 35 USC § 112(a)
Claims 1-13 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain compounds, does not reasonably provide enablement for compounds of the formula in claim 1. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not “Ar5 and Ar6 are vinyl groups;” within the scope of the claims can be used to form a chemical compound as claimed and whether the claims meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 1-13, it is believed that undue experimentation would be required because:
Breadth of the claims: The claims are drawn to a broad category of compounds comprising a specific formula wherein each compound requires that at least one of Ar5 and Ar6 are present, are bonded to both a group Ar3 and a group A1 and are simultaneously a vinyl group. However, a vinyl group cannot be bonded to two different groups and be a vinyl group. (See attached dictionary of chemistry entry for vinyl group).
Nature of the invention: The invention is drawn to organic chemicals which have standardized naming conventions that define what a group is based on its name. Vinyl groups have a definition that can only be bonded to one non-hydrogen atom. Applicant has not redefined this group in the specification.
State of the prior art: The prior art does not allow for vinyl groups to be bonded to two different non hydrogen atoms.
The level of one of ordinary skill: The ordinarily skilled artisan knows the standard chemical nomenclature.
The level of predictability in the art: While some properties of chemical materials are unpredictable, the possible bonding of a specific functional group is well characterized.
Amount of direction provided: Applicant has not provided any direction as to how a vinyl group can have more than one nonhydrogen atom bonded to it.
The existence of working examples: Applicant has not provided any examples of a vinyl group with two non-hydrogen atoms bonded to it.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure: It is unclear what sorts of experiments would have to be done to make a vinyl group with two non-hydrogen atoms bonded to it.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-13.
Claim Rejections - 35 USC § 112(b)
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 1-13 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.
The instant claim 1 requires that Ar5 and Ar6 are vinyl groups. However, it is not clear how this is possible as the compound requires two groups to be bonded to each of Ar5 and/or Ar6 and therefore they cannot be a vinyl group. These groups are defined only as vinyl each time they are mentioned in the instant specification. Further, Applicant has not provided a definition of vinyl in the specification and therefore the art definition of vinyl is used to interpret the claims. The Dictionary of Chemistry defines a vinyl group s CH2=CH-. The lack of further substitution is part of the definition of a vinyl group, a very specific alkene group. In much the same way that we cannot call a ketone a substituted aldehyde or an ether a substituted alcohol, further substitution of a vinyl group renders the group no longer a vinyl group.
Claims 2 and 3 limit the groups Ar1 and Ar2 respectively to be selected from
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66
216
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or
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64
192
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respectively but the * is not defined in the claims.
Similarly, claim 4 limits the groups Ar3 and Ar4 to be selected from
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94
384
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.
Relevant Prior Art
The prior art cited (CN11018884) and attached herewith appears to be material the patentability of certain embodiments of the invention described in the instant specification (e.g. compound N10). However, this art is not included in a prior art rejection as the materials N1 to N11 in the specification are not claimed herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean M DeGuire whose telephone number is (571)270-1027. The examiner can normally be reached Monday to Friday, 7:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer A. Boyd can be reached at (571) 272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sean M DeGuire/Primary Examiner, Art Unit 1786
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