DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per preliminary amendment dated 4/10/24, claims 27-53 are currently pending in the application.
Specification
The disclosure is objected to because of the following informalities:
The specification as amended on 4/10/24 recites the following structure in paragraphs [0005] and [0011]:
PNG
media_image1.png
188
434
media_image1.png
Greyscale
However, the oxygen atoms carrying the charge appear to be covalently linked to the charged multi-amine species. Applicant is advised to amend the structures to capture the charged dispersant structure accurately.
Appropriate correction and/or clarification is required.
Claim Objections
Claims 27 and 48 are objected to because of the following:
In claim 27, the amended structure lacks clarity, specifically the letters “q”, “t”, “p”, “z”, and the negative charges are all blurred.
Additionally, incorporating the discussion from paragraph 2 above, Applicant is advised to amend claim 27 to recite the charged dispersant structure accurately with improved clarity.
In claim 48, the recitation “that could convert” may be amended to recite “that converts”.
Appropriate corrections and/or clarifications are 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.
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 27-48, 50-53 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.
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 27 recites the broad recitation “R4 is a carbon chain containing between 1 and 4 carbons”, and the claim also recites “preferably between 1 and 2” 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. 28-48, 50-53 are subsumed by rejected base claim 27 and are therefore, included in this rejection.
Allowable Subject Matter
Claims 27-48, 50-53 would be allowable if claim 27 is rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and the objections set forth in this Office action.
Claim 48 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 (except the preferred narrower statement) and any intervening claims.
Examiner contacted the attorney (Mr. Vincent Cortese) on 1/5/25 by phone and discussed the issues presented above. However, the attorney requested that an office action be mailed so as to address/amend the claimed structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert 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 an application may be obtained from the Patent
Application Information Retrieval (PAIR) system. Status information for published applications
may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
applications is available through Private PAIR only. For more information about the PAIR
system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to
the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-
free). If you would like assistance from a USPTO Customer Service Representative or access to
the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-
1000.
/Satya B Sastri/
Primary Examiner, Art Unit 1762