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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Brazil on March 1, 2024. It is noted, however, that applicant has not filed a certified copy of the priority Application BR 10 2024 004250 6 application as required by 37 CFR 1.55.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The disclosure is objected to because of the following informalities: the chemical structures following paragraphs [005] and [014] within the specification and the description of those chemical structures are blurry and contain illegible words and letters.
Chemical or mathematical formulae, tables, and waveforms may be submitted as drawings and are subject to the same requirements as drawings. (37 C.F.R. 1.84 (d)).
(p) Numbers, letters, and reference characters.
(1) Reference characters (numerals are preferred), sheet numbers, and view numbers must be plain and legible, and must not be used in association with brackets or inverted commas, or enclosed within outlines, e.g., encircled. They must be oriented in the same direction as the view so as to avoid having to rotate the sheet. Reference characters should be arranged to follow the profile of the object depicted.
(2) The English alphabet must be used for letters, except where another alphabet is customarily used, such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must measure at least .32 cm. (1/8 inch) in height. They should not be placed in the drawing so as to interfere with its comprehension. Therefore, they should not cross or mingle with the lines. They should not be placed upon hatched or shaded surfaces. When necessary, such as indicating a surface or cross section, a reference character may be underlined and a blank space may be left in the hatching or shading where the character occurs so that it appears distinct. (37 C.F.R. 1.84).
Appropriate correction is required.
The disclosure is objected to because of the following informalities: the table on page 3 paragraph [010] contains a language that is not English.
Appropriate correction is required.
Status of Claims
Claims 1, 2 and 6 – 8 are pending.
Clams 1, 2 and 6 – 8 are rejected
Claim Objections
Claim 2 is objected to because of the following informalities: in the description for chemical formula C, after “epoxidized” proprylene is the incorrect spelling for propylene. Appropriate correction is required.
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.
Claims 1, 2 and 6 - 8 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, 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 1 recites the broad recitation a content between 1 and 15%, and the claim also recites preferably in the range of 2 to 8% 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.
Claim 1 recites “…it has a content between 1 and 15%, preferably in the range of 2 to 8%”. However, the claim recites that the fatty acid prepared has “high unsaturation content” and “limited content of saturated fatty acids”. Thus, it is not clear which component of the fatty acid being prepared” the content ratio is referencing. For this reason the claim is indefinite and lacks clarity.
Claim 2 recites product C with the structure disclosed and recites “its similar dipropylene glycol, tripropylene glycol, tetrapropylene glycol and pentapropylene glycol”. However, the term “similar” as it relates to chemical listed, which are not epoxidized compounds, makes the claim indefinite because it is not clear exactly is intended to be covered by the recitation “similar”.
Claim 2 recites product E with the structure disclosed and recites “its similar diethylene glycol, triethylene glycol, tetraethylene glycol and pentaethylene glycol”. However, the term “similar” as it relates to chemical listed, which are not epoxidized compounds, makes the claim indefinite because it is not clear exactly is intended to be covered by the recitation “similar”.
Claim 2 recites chemical structure A, C, D and E, wherein each of those chemical structures are claimed as having a linoleate (C18) chain attached to an oxygen of the core structure. Specifically, chemical structure A is described as epoxidized trimethylolpropane trilinoleate; while C, D and E as described contain the dilinoleate. However, the carbon chains extending from the core oxygens in the chemical structures of A, C, D and E have 19 carbons. Linoleic acid is C18:2 and alpha-linolenic acid is C18:3. Because of the difference between the chemical names and the chemical structures of A, C, D and E, it is unclear what products are intended to be covered by the claimed invention.
Claim 6 contains "synthetic leather" in parenthesis. The claim is vague and lacks clarity because it is not clear whether the language contained within the parenthesis is a required portion of the claim, or if the language is merely exemplary. (MPEP 2173.02 & .05(d)).
Claims 6 – 8 are rejected from being dependent upon a rejected base claim.
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.
Claim Rejections - 35 USC § 101
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.
Claim 6 is rejected under 35 U.S.C. 112(b), 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 6 provides use of products of claim 2 for the production of flexible polyvinyl chloride (PVC) films, footwear compounds, flexible PVC for application producing floors, upholstery and bag articles. However, since the claim does not set forth all the steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a process without any active, positive steps delimiting how this process is actually practiced. The elements of a method claim must be steps or acts, expressed as verbal statements or phrases.
Claim 6 is rejected under MPEP 2173.05(q) which states that this type of rejection is more appropriate under 35 U.S.C. 101. ( Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967)). In this case, claim 6 is rejected under 35 U.S.C. 101 for being directed to nonstatutory subject matter. The claims does not fall into one of the four categories of patent eligible subject matter because it does not define “actions” for all of the listed steps.
As explained by the Supreme Court, a "process" is "a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing." Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972) (italics added) (quoting Cochrane v. Deener, 94 U.S. 780, 788, 24 L. Ed. 139, 141 (1876)). Accord Nuijten, 500 F.3d at 1355, 84 USPQ2d at 1501 ("The Supreme Court and this court have consistently interpreted the statutory term ‘process’ to require action") (MEPE 2106.03.I.).
Claim Rejections - 35 USC § 112/Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found above in this Office action.
Claim 7 is rejected under 35 U.S.C. 112(b), 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 7 provides use of the product of claim 2 in paints and varnishes but, since the claim does not set forth all the steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a process without any active, positive steps delimiting how this process is actually practiced. The elements of a method claim must be steps or acts, expressed as verbal statements or phrases.
Claim 7 is rejected under MPEP 2173.05(q) which states that this type of rejection is more appropriate under 35 U.S.C. 101. ( Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967)). In this case, claim 6 is rejected under 35 U.S.C. 101 for being directed to nonstatutory subject matter. The claims does not fall into one of the four categories of patent eligible subject matter because it does not define “actions” for all of the listed steps.
As explained by the Supreme Court, a "process" is "a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing." Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972) (italics added) (quoting Cochrane v. Deener, 94 U.S. 780, 788, 24 L. Ed. 139, 141 (1876)). Accord Nuijten, 500 F.3d at 1355, 84 USPQ2d at 1501 ("The Supreme Court and this court have consistently interpreted the statutory term ‘process’ to require action") (MEPE 2106.03.I.).
Claim Rejections - 35 USC § 112/Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found above in this Office action.
Claim 8 is rejected under 35 U.S.C. 112(b), 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 8 provides use of the product of claim 2 in synthetic nail enamel but, since the claim does not set forth all the steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a process without any active, positive steps delimiting how this process is actually practiced. The elements of a method claim must be steps or acts, expressed as verbal statements or phrases.
Claim 8 is rejected under MPEP 2173.05(q) which states that this type of rejection is more appropriate under 35 U.S.C. 101. ( Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967)). In this case, claim 6 is rejected under 35 U.S.C. 101 for being directed to nonstatutory subject matter. The claims does not fall into one of the four categories of patent eligible subject matter because it does not define “actions” for all of the listed steps.
As explained by the Supreme Court, a "process" is "a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing." Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972) (italics added) (quoting Cochrane v. Deener, 94 U.S. 780, 788, 24 L. Ed. 139, 141 (1876)). Accord Nuijten, 500 F.3d at 1355, 84 USPQ2d at 1501 ("The Supreme Court and this court have consistently interpreted the statutory term ‘process’ to require action") (MEPE 2106.03.I.).
Art Made of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO2013/003225 (Ghosh-Dastidar) discloses vegetable derived Plasticizer. US2015/0011680 (Habas et al.) discloses biosourced epoxide resins having improved reactivity. CN104370860 (Deng et al.) discloses plant-derived deploy oleic acid glycerin which has use as plasticizer. Gan et al. (European Polymer Journal, 1994) discusses epoxidized esters of palm olein as plasticizers for polyvinyl chloride. Greenspan et al. (Industrial and Engineering Chemistry, 1953) discusses epoxy fatty acid ester plasticizers. Greenspan et al. (the Journal of the American Chemists’ Society, 1956) discusses Epoxy fatty acid ester plasticizers, preparation and properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Y. Goon can be reached at (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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