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 .
Election/Restrictions
Applicant's election with traverse of Group IV (claims 12 & 13) in the reply filed on 04/21/2026 is acknowledged. The traversal is on the ground(s) that: (I) there would be no burden to search all the groups; and (II) claim 14 as amended and new claim 17 should be included in the elected group. This is not found persuasive.
I. The burden on the Primary Examiner extends to patentability issues associated with, and evolving as a result of, examining additional inventions.
A serious examination burden may exist where issues relevant to one invention are not relevant to the other invention. MPEP § 808.02. For example, issues related to a process are frequently very different from those related to a composition. Here, the issues related to the requirements for synthesizing the polymeric coating composition need not be familiar to a Primary Examiner of specific processes for applying coatings to leather substrates.
II. Claim 14 should not be examined with claims 12, 13, and 17 because Unity of Invention is lacking a posteriori.
The principles of unity of invention are used to determine the types and claimed subject matter and the combinations of claims to different categories of invention that are permitted to be included in a single national stage patent application. The basic principle is that an application should relate to only one invention or, if there is more than one invention, that Applicant would have a right to include in a single application only those inventions which are so linked as to form a single general inventive concept. See MPEP §1893.03(d).
Whether or not any particular technical feature makes a “contribution” over the prior art, and therefore constitutes a “special technical feature,” should be considered with respect to novelty and inventive step. For example, a document discovered in the international search shows that there is a presumption of lack of novelty or inventive step in a main claim, so that there may be no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, leaving two or more dependent claims without a single general inventive concept.
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Lack of unity of invention may be directly evident “a priori,” i.e., before considering the claims in relation to any prior art, or may only become apparent “a posteriori,” i.e., after taking the prior art into consideration. For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A + X and A + Y, unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art. This method for determining whether unity of invention exists is intended to be applied even before the commencement of the international search. Where a search of the prior art is made, an initial determination of unity of invention, based on the assumption that the claims avoid the prior art, may be reconsidered on the basis of the results of the search of the prior art. See MPEP §1850(II).
Here, the subject matter common to claims 12 and 14, the modified lactone polymer, is not a technical feature that defines a contribution over the prior art, because it is anticipated or obvious in view of US 5,618,911 A for the reasons detailed in the Written Opinion of the Int’l Searching Auth. for PCT/EP2022/059919, of which the instant application is the 35 U.S.C. § 371 National Stage entry, incorporated herein by reference. Consequently, Unity of Invention is lacking a posteriori.
The requirement is still deemed proper and is therefore made FINAL.
Claim(s) Status
Claims 1-17 are now pending as filed 04/21/2026.
Claims 1-11 and 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/21/2026.
Priority
This application is the 35 U.S.C. § 371 National Stage entry of PCT/EP2022/059919, filed 04/13/2022 and published as WO 2022/219064 A1 on 10/20/2022. The report on patentability of the IPEA or ISA in this National Stage application has been considered by the Primary Examiner. MPEP § 1893.03(e).
This application also claims benefit of EP 21168715.7, filed 04/15/2021.
Information Disclosure Statement
The IDSs filed 10/12/2023, 12/12/2023, and 11/26/2025 have been considered by the Primary Examiner.
Specification
The abstract of the disclosure is objected to because it fails to recite process steps. 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).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 12, 13, and 17 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 12
Claim 12, as amended, is confusing and difficult to understand because it seems to unnecessarily repeat elements. For example, it is the Primary Examiner’s position that the process claimed requires that the modified lactone polymer be made by:
Step 1: reacting a lactone polymer first with compounds (i), then compounds (ii), to form intermediate modified lactone polymer A and intermediate modified lactone polymer A*, and reacting lactone polymer first with compounds (ii), then compounds (i), to form intermediate modified lactone polymer B and intermediate modified lactone polymer B*;
Step 2: optionally, reacting modified lactone polymer A* and/or modified lactone polymer B* with additional compounds to form intermediate modified lactone polymer C; and
Step 3: reacting intermediate modified lactone polymers A, A*, B, B*, and/or C, when produced from an ethylenically unsaturated C4-C8 dicarboxylic anhydride, with metabisulfite, bisulfite, sulfite, sulfuric acid, or a mixture of two or more thereof.
The indiscriminate use of Roman numerals, semicolons, commas, and modifiers that are not closely connected to the elements they modify (e.g., “the alkyl or alkylene C12-C40 acid or alcohol being linear or branched; free or ethoxylated and/or peroxylated”) make differentiating between elements and clauses unclear. Consequently, the metes and bounds of the claim are unclear. “An undisputable method claim has clauses that are designated by a present participle and separated with a comma (or a semicolon that includes a comma). See Credle v. Bond, 25 F.3d 1566, 1572 (Fed. Cir. 1994).
Moreover, the phrase "such as" (“such as maleic anhydride or itaconic acid”) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 13 is similarly rejected because it includes this indefinite subject matter by virtue of its dependency.
Claim 17
Claim 17 recites the limitation "the administering" in line 1 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim Interpretation
The Primary Examiner understands the term “lactone oligomer or polymer” as referring both to lactones (closed ring) and oligomers or polymers resulting from a ring-opening polymerization. See Spec. at [0034]-[0035].
Everything recited in claim 12 following “wherein the modified lactone polymer is obtained by” is a nested product-by-process limitation. Consequently, the process steps of a nested product-by-process limitation are not considered when assessing the patentability of the claimed method. See Biogen MA Inc. v. EMD Serono, 976 F.3d 1326, 1340 (“[t]he nesting of the product-by-process limitation within a method . . . does not change the proper construction of the product-by-process limitation itself”).
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentabale even though the prior art product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). If the process limitation connotes specific structure and may be considered a structural limitation, however, that structure should be considered. In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). See also In re Nordt Dev. Co., 881 F.3d 1371, 1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018). Once a product appearing to be substantially identical is found and a prior art rejection is made, the burden shifts to the Applicant to show a non-obvious difference. MPEP § 2113(II).
Here it is the Primary Examiner's position that the set of all modified lactone polymers has some required structure but, because the metes and bounds of claim 12 are impossible to determine, so are the polymers qualifying as members of that set. Applicant has provided no general structure or exemplary names of modified lactone polymers in the originally filed specification.
Allowable Subject Matter
Insofar as the Primary Examiner is able to understand what qualifies as a modified lactone polymer, it is the Primary Examiner’s position that the prior art neither teaches nor suggests the use of such polymers to fatliquor a skin or leather.
US 5,618,911 A teaches, as explained in the Written Opinion mentioned above, that the modified lactone polymer itself would have been obvious to one of ordinary skill in the art. However, the reference specifically teaches [10:bottom]:
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There is no teaching or suggestion of using the modified lactone polymer as a fatliquor for skin/leather — or even as a means of moisturizing skin.
US 4,810,251 A teaches a fatliquoring composition that includes a hydroxypolyester produced by the reaction of dibasic carboxylic acids or anhydrides [4:3-28]; a polyhydric alcohol reading on a C12-C40 polyhydric alcohol, and polyesters of lactones [4:46-5:4]. This reference differs from the instant invention in that it teaches a solution, dispersion, or emulsion of these compounds, not their reaction product [abstract].
US 6,379,751 B1 teaches a water-repellent composition containing a polysiloxane that is the reaction product of an aminopolysiloxane, a lactone [claim 11], and dicarboxylic anhydrides [22:62]. While it can be applied to a leather or hide and can include fatliquoring agents [40:39], this reference does not further teach reacting with metabisulfite, bisulfite, sulfite, or sulfuric acid. Consequently, the resultant product would lack the structural component provided by this reaction.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
18 June 2026
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