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 .
DETAILED ACTION
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 1-14 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.
Newly recited clause for a phenol having the Formula (1) of claim 1 is directed at the specific polyols recited. The phenol having the Formula (1) of claim 1 is not limited to the phenol having substituents having Formula (3) since claim 1 recites that R11 and R12 include hydrogen or a linear saturated hydrocarbon group having a carbon number of 1 to 12, where R11 and R12 cannot be both hydrogen atoms, which would be an alternative Formula (1) to the newly recited clause for the Formula (1) of claim 1. Thus, it is unclear whether the phenol having the Formula (1) of claim 1 is limited to the phenol having the newly recited clause or not. In other words, the recited Formula (1) of claim 1 includes R11 being the hydrogen and R12 being the linear saturated hydrocarbon group having a carbon number of 1 to 12 which does not require the alternative substituent having Formula (3).
See Ex parte Miyazaki, No. 2007-3300, 2008 WL 5105055, at 5 (BPAI Nov. 19, 2008) 89 USPQ2d 1207: [I]f a claim is amendable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35. USC 112, 2nd paragraph, as indefinite. MPEP 2175 and 2143.03.
Other claims depend on the indefinite claim 1 would be also indefinite.
Claim Rejections - 35 USC § 103
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.
Claims 1-4, 7, 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable
over WO 2016/033156 A1 (March 3, 2016) in view of Yeager et al. (US 2008/0076884
A1) (Mar. 27, 2008).
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here).
Regarding new claims 13 and 13, WO teach various wt.% of a mixture of phenols in table 2 and thus the instantly recited various mol% to obtain different D, Tg and Char Mass in N2 taught in table 2 and different properties taught in para. [0001] of WO would have been obvious. When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Further regarding utilization of the instant Formula (1), Yeager et al. teach a phenol having instant R11 and R12 and limitation thereof (i.e. both cannot be H) in [0025]. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
RESPONSE TO ARGUMENTS
Applicant asserts that Yeager et al. exclude a tertiary hydrocarbyl at the ortho positions (R11 and R12) and that the claimed Formula (3) encompasses bulky ortho substituents such as tert-butyl. Such assertion would not mean that presence of the bulky ortho substituents is mandatory, and the claimed Formula (3) also encompasses one without bulky ortho substituents.
Applicant asserts that Yeager et al. do not suggest the newly recited clause for a phenol having the Formula (1) of claim 1, but the newly recited clause for a phenol having the Formula (1) of claim 1 would be an alternative as discussed above 112(b) rejection. Thus, applicant’s assertion would lack a probative value.
Claims 1-8 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2008-239720 A (Oct. 9, 2008) with Machine translation in view of a 1-page brochure showing 3-Pentadecylphenol (CAS. No. 501-24-6), WO 2016/033156 A1 (March 3, 2016) and Yeager et al. (US 2008/0076884 A1) (Mar. 27, 2008).
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here).
Regarding new claims 13 and 14, Machine translated JP and JP teach a mixture of 60 mass%-95 mass% of the phenolic compound (C) and 5 mass % to 40 mass % of the phenolic compound (D) in claims 4 and 5 (page 3 of JP). When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
RESPONSE TO ARGUMENTS
Applicant asserts that Yeager et al. exclude a tertiary hydrocarbyl at the ortho positions (R11 and R12) and that the claimed Formula (3) encompasses bulky ortho substituents such as tert-butyl. Such assertion would not mean that presence of the bulky ortho substituents is mandatory, and the claimed Formula (3) also encompasses one without bulky ortho substituents.
Applicant asserts that Yeager et al. do not suggest the newly recited clause for a phenol having the Formula (1) of claim 1, but the newly recited clause for a phenol having the Formula (1) of claim 1 would be an alternative as discussed above 112(b) rejection. Thus, applicant’s assertion would lack a probative value.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2008-239720 A (Oct. 9, 2008) with Machine translation in view of a 1-page brochure showing 3-Pentadecylphenol (CAS. No. 501-24-6) and Yeager et al. (US 2008/0076884A1) (Mar. 27, 2008) as applied to claims 1-8 and 12-14 above, and further in view of Japp et al. (US 2004/0082730 A1).
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here).
RESPONSE TO ARGUMENTS
See the Response to Arguments above for the rejection of claims 1-8 and 12.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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