CTNF 18/558,384 CTNF 97381 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 § 101/112 07-04-01 AIA 07-04 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 07-30-01 The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. 07-05-04 Claim 26 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a credible asserted utility or a well-established utility. Claim 26 is a “use” claim that fails to recite any steps. Claim 26 is also rejected under 35 U.S.C. 112(a). Specifically, because the claimed invention is not supported by either a credible asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-aia AIA 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. 07-21-aia AIA Claim 16-19, and 21-30 are rejected under 35 U.S.C. 103 as being unpatentable over Levins (CA 2819831 A1, attached) in view of Wood (WO 2018/199927 A1, attached) . Regarding claims 16-19, 21-22, and 24-25, Levins teaches a polymer composition suitable for use in a coating, and having a linear UV-absorbing polyether, which may be a polyglycerol based polyether, chemically bound to a UV-chromophore, which may be a triazine (claims 1, 9, 15). The final polymer may have a weight-average molecular weight ranging from 500 to about 50,000 (p. 4). Levins also teaches a method of making the polymer by combining the polyether and the UV absorber, then heating to 175 degrees Celsius, and distilling to isolate the product (p. 30, ex. 11). Levins does not limit the triazine that may be used. In the same field of endeavor, Wood teaches a triazine UV light absorber that reads on the claimed formula A where R1 is H or C1-C18 linear or branched alkyl groups that can be substituted (with one or more of -C(O)O, -C(O)OR5, or -C(O)N(R5) 2 ); R2=R4=R5=R6=R7=R8=H, R3 is substituted or unsubstituted C6-C24 aryl; R11 and R12 are independently hydrogen or unsubstituted linear C1-C18 alkyl; R13 is unsubstituted linear C1-C18 alkyl, and R" is either hydrogen or unsubstituted or substituted, linear or branched C1-C18 alkyl (p. 2-3, Formula (I)). More specifically, Wood teaches the claimed compound A2 where Wood’s R3 is hydrogen and Wood’s R1, analogous to the claimed Y, is a C2 straight-chain alkyl substituted with -C(O)OR5, having R5=CH 3 (p. 2). These prior art ranges overlap all claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Levins and the UV light absorber of Wood to arrive at the claimed invention, and to reduce coating thickness without attendant deterioration in UV stability, as taught by Wood (p. 1, [0003]). Regarding claim 23, Levins in view of Wood remains as applied to claim 16 above. Levins and Wood are silent as to the UV absorption of the polymer. Nevertheless, the composition of Levins as modified by Wood contains the same ingredients in the same amounts, prepared in the same way as the instant composition, and will necessarily possess the same UV absorption characteristics as the claimed composition. Products of identical chemical composition cannot have mutually exclusive chemical properties. See MPEP 2112. Regarding claims 26-30, Levins in view of Wood remains as applied to claim 16 above. Wood further teaches a UV-absorbing coating having a coating resin, triazine UV absorber, and a hindered amine light stabilizer (HALS) (Abstract). Wood also teaches a method of stabilizing a coating on a substrate toward ultraviolet radiation, including applying the coating to a substrate (claim 19). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the UV-absorber-polyether polymer of Levins as modified by Wood for use in the coating and method of Wood to arrive at the claimed invention, and because of the art-recognized suitability for the intended use. See MPEP 2144.07 . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Levins in view of Wood, discussed above in reference to claim 16. The combined prior art teaches a similar composition, but fails to teach the claimed molar ratio of the ingredients. Levins teaches the ratio of hydroxyl content to UV absorber content, but in the absence of data as to the hydroxyl content per mole of the experimental synthesis products, a molar ratio of the ingredients cannot be established. As such, the instant claims contain a limitation not found in the prior art, and would be allowable if rewritten . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. ELIZABETH K. AMATO Examiner Art Unit 1762 /ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762 Application/Control Number: 18/558,384 Page 2 Art Unit: 1762 Application/Control Number: 18/558,384 Page 3 Art Unit: 1762 Application/Control Number: 18/558,384 Page 4 Art Unit: 1762 Application/Control Number: 18/558,384 Page 5 Art Unit: 1762 Application/Control Number: 18/558,384 Page 6 Art Unit: 1762
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