DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This application is entitled to and claims the benefit of priority of DE Patent App. No. 102022121826.0, filed 08/29/2022. The preliminary amendment filed on 08/28/2023 is entered and acknowledged by the Examiner.
3. Applicant’s election of Group I, claims 1-6, 12-13 with traverse in the reply filed on 04/16/2026 is acknowledged. The traversal is on the ground that there is no added burden on the examiner to also search claims 7-11. This is not found persuasive because the claims are directed to different inventions, and the inventions of claims 7-11 acquired a separate status in the art due to its recognized divergent subject matter as stated in the restriction requirement of 03/11/2026, and furthermore the invention requires a different field of search, for example, searching different classes/subclasses or electronic resources, or employing different search queries and as such examination of both sets of claims would necessarily be different. Examination and prosecution of two different inventions would in fact pose an undue burden on the Examiner. The restriction requirement is still deemed proper and is therefore made FINAL.
4. Claims 1-13 are pending. Claims 1-6, 12-13 are under examination on the merits. Claims 7-11 are withdrawn to a non-elected invention from further consideration.
Information Disclosure Statement
5. The information disclosure statements submitted on 08/28/2023, and 09/29/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Priority
6. Receipt is acknowledged of papers submitted on 10/18/2023 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Objections
7. Claim 2-6, 12-13 are objected to because of the following informalities: It is suggested that “according to Claim x,” be deleted and "according to claim x,” " be inserted in its stead so as to engender claim language clarity. It is unclear what “new” was intended to convey. Appropriate correction is required.
Claim Rejections - 35 USC § 112
8. 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.
9. Claims 4-5 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. Claim 1 recites “one or more high-boiling liquid(s) as secondary constituents”, wherein applicant fails to articulate by sufficiently distinct functional language, applicant regards as those which will facilitate “high-boiling liquid(s)” requisite to identifying the liquid(s) temperature or matter claimed (i.e., what is the temperature of high-boiling liquid(s)?), thus claim 4 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope and the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim from the application disclosure. Claim 5 being depended on claim 4 is rejected as well.
Claim Rejections - 35 USC § 102
10. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
11. Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hideo Suzuki (JP2002-249490 A, machine transition, hereinafter “’490”).
Regarding claim 1: ‘490 discloses an alicyclic dissolution-inhibiting compound such as
one or more acetals of tricyclodecane alcohols as a main constituent, wherein a tricyclodecane alcohol is a compound of which the structure has the base skeleton of tricyclo[5.2.1.02,6]decane and at least one OH group, and wherein all OH groups of the tricyclodecane alcohol have been acetalized in the acetal (Page 10/11, [0040], Example 1).
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If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
12. Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ogawa et al. (US Pub. No. 2014/0370219 A1, hereinafter “’219”).
Regarding claims 1-2: ‘219 discloses a medical packaging container (Page 1, [0001]) having a polyester resin (A1) including diol units and dicarboxylic units, the diol units including at least one diol unit in an amount of 1 to 30 mol % selected from diol units having a bridged alicyclic skeleton derived from a compound represented by formula (1) such as 3(4),8(9)-bis(hydroxymethyl) tricyclo[5.2.1.02,6]decane as the main constituent (Page 8, [0136]). ‘219 discloses in particular, in considering the high temperature resistance, the water vapor barrier properties, the oxygen barrier properties, and the mechanical performance, the amorphous polyester resin (A) preferably include: diol units having a bridged alicyclic skeleton or a cyclic acetal skeleton (Page 9, [0148]).
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If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Claim Rejections - 35 USC § 103
13. 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.
14. Claims 1-3 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Ogawa et al. (US Pub. No. 2014/0370219 A1, hereinafter “’219”) in view of Suzuki (JP2002-249490 A, machine transition, hereinafter “’490”).
Regarding claims 1-3: ‘219 discloses a medical packaging container (Page 1, [0001]) having a polyester resin (A1) including diol units and dicarboxylic units, the diol units including at least one diol unit in an amount of 1 to 30 mol % selected from diol units having a bridged alicyclic skeleton derived from a compound represented by formula (1) such as 3(4),8(9)-bis(hydroxymethyl) tricyclo[5.2.1.02,6]decane as the main constituent (Page 8, [0136]). ‘219 discloses in particular, in considering the high temperature resistance, the water vapor barrier properties, the oxygen barrier properties, and the mechanical performance, the amorphous polyester resin (A) preferably include: diol units having a bridged alicyclic skeleton or a cyclic acetal skeleton (Page 9, [0148]). ‘219 does not expressly teach one or more acetals of 3(4),8(9)-bis(tetrahydropyran-2-yloxymethyl)tricyclo[5.2.1.02,6]decane as the main constituent.
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However, ‘490 teaches an alicyclic dissolution-inhibiting compound such as
one or more acetals of tricyclodecane alcohols as a main constituent, wherein a tricyclodecane alcohol is a compound of which the structure has the base skeleton of tricyclo[5.2.1.02,6]decane and at least one OH group, and wherein all OH groups of the tricyclodecane alcohol have been acetalized in the acetal (Page 10/11, [0040], Example 1). ‘490 teaches the use of 3,4-dihydro-2H-pyran (DHP) as an acetalizing agent which is most commonly used to protect hydroxyl groups as tetrahydropyranyl (THP) ethers, which are a type of acetal (specifically, a ”double-ether” acetal).
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Therefore, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000).
15. Claims 1, 4-5, 12 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Hans-Joachim Weippert (US Pub. No. 2014/0355109 A1, hereinafter “’109”) in view of Suzuki (JP2002-249490 A, machine transition, hereinafter “’490”).
Regarding claims 1,4-5: ‘109 teaches an immersion liquid for microscopy (Page 1, [0002]) comprising an organic compound which contains a saturated polycyclic hydrocarbon residue is preferably an ester or ether of a hydroxy-substituted saturated polycyclic hydrocarbon, for example an ester or ether of tricyclodecane alcohols, in particular hydroxymethyl tricyclo [5.2.1.02,6]decane and/or bis(hydroxymethyl)tricyclo[5.2.1.02,6]decane, 8-hydroxymethyltricyclo [5.2.1.02,6]decane and 9-hydroxymethyltricyclo[5.2.1.02,6]decane as well as 3,8 bis(hydroxy methyl) tricyclo[5.2.1.02,6]decane, 3,9-bis(hydroxymethyl)tricyclo [5.2.1.02,6] decane, 4,8-bis (hydroxymethyl)tricyclo[5.2.1.02,6]decane and 4,9-bis(hydroxymethyl)tricyclo [5.2.1.02,6]decane (Page 2, [0025]), and high-boiling liquid as secondary constituents such as paraffin oil (Page 3, [0033]). ‘109 does not expressly teach 8-tetrahydropyran-2-yloxymethyl tricyclo [5.2.1.02,6] decane, and/or 3(4),8(9)-bis(tetrahydropyran-2-yloxymethyl)tricyclo[5.2.1.02,6] decane as the main constituent.
However, ‘490 teaches an alicyclic dissolution-inhibiting compound such as
one or more acetals of tricyclodecane alcohols as a main constituent, wherein a tricyclodecane alcohol is a compound of which the structure has the base skeleton of tricyclo[5.2.1.02,6]decane and at least one OH group, and wherein all OH groups of the tricyclodecane alcohol have been acetalized in the acetal (Page 10/11, [0040], Example 1). ‘490 teaches the use of 3,4-dihydro-2H-pyran (DHP) as an acetalizing agent which is most commonly used to protect hydroxyl groups as tetrahydropyranyl (THP) ethers, which are a type of acetal (specifically, a “double-ether” acetal).
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Therefore, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000).
Regarding claim 12: ‘109 teaches the immersion liquid for microscopy (Page 1, [0002])
16. Claims 1, 6, 12-13 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Jaeger et al. (US Pub. No. 2021/0302712 A1, hereinafter “’712”) in view of Suzuki (JP2002-249490 A, machine transition, hereinafter “’490”).
Regarding claims 1,6,13: ‘712 teaches an immersion liquid (Page 2, [0012]) comprising a) 15-85% by weight of a first diester A1 based on a tricyclodecane radical K having one functional group and a first hydrocarbon derivative C1 having two functional groups (Page 3, [0026]; Page 12, Claim 5), and b) 15-85% by weight of a second diester A2 based on the tricyclodecane radical K having one functional group and a second hydrocarbon derivative C2 having two functional groups, where C1 and C2 are different (Page 3, [0027]; Page 12, Claim 5).’712 dies not expressly teach one or more acetals of tricyclodecane alcohols as a main constituent, wherein a tricyclodecane alcohol is a compound of which the structure has the base skeleton of tricyclo[5.2.1.02,6]decane and at least one OH group, and wherein all OH groups of the tricyclodecane alcohol have been acetalized in the acetal
However, ‘490 teaches an alicyclic dissolution-inhibiting compound such as
one or more acetals of tricyclodecane alcohols as a main constituent, wherein a tricyclodecane alcohol is a compound of which the structure has the base skeleton of tricyclo[5.2.1.02,6]decane and at least one OH group, and wherein all OH groups of the tricyclodecane alcohol have been acetalized in the acetal (Page 10/11, [0040], Example 1). ‘490 teaches the use of 3,4-dihydro-2H-pyran (DHP) as an acetalizing agent which is most commonly used to protect hydroxyl groups as tetrahydropyranyl (THP) ethers, which are a type of acetal (specifically, a “double-ether” acetal).
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Therefore, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000).
Regarding claim 12: ‘712 teaches the immersion liquid (Page 2, [0012]), wherein the immersion liquid is an immersion liquid for microscopy (Page 2, [0013]).
Examiner Information
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
05/13/2026
bijan.ahvazi@uspto.gov
Prosecution Insights