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 .
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
The abstract of the disclosure is objected to because it does not disclose the general nature of the claimed compounds. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
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 1-12 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. Claim 1 is indefinite for the following reasons:
The first “one or more formulations of” in claim 1 is indefinite. It is unclear whether only one of prepolymer, tackifier, auxiliary, and filler is needed to meet the claim limitation, or whether multiple formulations comprising all of the components may be present. If it is the latter the total amounts for each component are unclear.
The second “one or more formulations of” in parenthesis is indefinite. Its purpose in the claim is unclear.
The limitation “(Diisocyanate)” is indefinite. It is unclear how it further limits the claim.
The limitation “slowly” is indefinite. The metes and bounds are unclear.
The limitation “high molecular” is indefinite. The metes and bounds are unclear.
The limitation “which is a commodity” is indefinite. It is unclear how the phrase further limits the claim.
Claim 1 recites the limitation "the silane coupling agent". There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the resistance adjuster". There is insufficient antecedent basis for this limitation in the claim.
The limitation “etc.” in line 10 is indefinite. Furthermore, the list of solvents has no grammatical conjunction, and it unclear if all of the solvent are required.
The use of parenthesis around the range in line 10 is indefinite.
Claim 1 recites the limitation "the required amount". There is insufficient antecedent basis for this limitation in the claim. The metes and bounds of “required amount” are unclear.
Claim 1 recites the limitation "the carrier". There is insufficient antecedent basis for this limitation in the claim.
The limitation “mix and stir” in line 14 is indefinite. It is unclear how mix and stir are differentiated.
The limitation “coupling and grafting” is indefinite. It is unclear how coupling and grafting are differentiated.
Claim 1 recites the limitation "the trace amount of the carrier surface". There is insufficient antecedent basis for this limitation in the claim.
The limitation “~” is indefinite. The metes and bounds are unclear.
The limitation “high voltage” is indefinite. The metes and bounds are unclear.
Claim 3 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). There are several instances of this in claim 3. For instance, the claim recites the broad recitation polytetrahydrofuran type prepolymer, and the claim also recites polytetramethylene ether glycol polyol which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Furthermore, claim 3 lacks a grammatical conjunction before the last item in the list.
Claim 5 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation hydrogenated diphenylmethane diisocyanate, and the claim also recites 4,4’-dicyclohexylmthane diisocyanate, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
It is noted that “dicyclohexylmthane” is a typographical error. Furthermore, claim 5 lacks a grammatical conjunction before the last item in the list.
Claim 6 is 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. Claim 6 lacks a grammatical conjunction before the last item in the list.
Claim 7 is 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 limitation “thixotropy” is indefinite. It is interpreted to be a thixotropy agent. Furthermore, claim 7 lacks a grammatical conjunction before the last item in the list.
Claim 8 is 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 limitation “etc.” is indefinite. The metes and bounds are unclear. Furthermore, claim 8 lacks a grammatical conjunction before the last item in the list.
Claim 9 is 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 limitation “N,N-Dimethyltrimethylenediamines” is indefinite because it is in the plural form. It is unclear if multiple compounds are required. Furthermore, claim 9 lacks a grammatical conjunction before the last item in the list.
Claim 10 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation polymer microspheres, and the claim also recites silica microspheres, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Furthermore, claim 10 lacks a grammatical conjunction before the last item in the list.
Claim 11 is 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. Claim 11 is indefinite for the following reasons:
The limitation “may” is indefinite. It is unclear if the compounds are optional or required.
The list in compound 11 includes compounds that are not polymers, such as silver nanowire, carbon nanotube, graphene.
The limitation “(monoalkyl ether phosphate)” is indefinite. Its purpose in the claim is unclear.
claim 11 lacks a grammatical conjunction before the last item in the list.
Claim 12 is 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. Dibutyltin dilaurate is not a vinyl trimethoxy silane. Furthermore, the only silane agent recited in claim 1 is a silane coupling agent. The limitation “(vinyltriethoxy silane)” is indefinite. Its purpose in the claim is unclear. Also, claim 12 lacks a grammatical conjunction before the last item in the list.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 specifies a diisocyanate curing agent, and claim 4 recites the broader “isocyanate”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
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.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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