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 .
Status of the Application
Claims 1-8 are pending and under current examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1 and 3-8 are rejected under 35 U.S.C. 112a, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
A lack of adequate written description issue arises if the knowledge and level of skill in the art would not permit one skilled in the art to immediately envisage the product claimed from the disclosed process. See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559, 1571,39 USPQ2d 1895, 1905 (Fed. Cir. 1996) (a "laundry list" disclosure of every possible moiety does not constitute a written description of every species in a genus because it would not "reasonably lead" those skilled in the art to any particular species); In re Ruschig, 379 F.2d 990, 995, 154 USPQ 118, 123 (CCPA 1967).
An applicant may also show that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics which provide evidence that applicant was in possession of the claimed invention, i.e., complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics. Applicant has provided some of the organic molecules with CM as in the instant claim 2. But representative specifies of the organic molecule do not encompass number of variations in generic formula and do not satisfy the written description requirement.
In particular, the specification as original filed fails to provide sufficient written bases of myriads of compounds that vary independently and lead to compounds of a wide variety of structures. These compounds encompass molecules that widely vary in physical and chemical properties such as size, molecular weight, acidity, basicity, and properties that are known in the art to greatly influence physical and chemical properties. The claims cover compounds easily in the millions given the number of variables and especially variation of CM; thus the claims are very broad. The mere fact that Applicant may have discovered one specific type of an organic molecule/subgenus is not sufficient to claim the entire genus of claim 1.
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406.
A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure "indicates that the patentee has invented species sufficient to constitute the gen[us]."
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.
Claim 3 is 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 pre-AIA the applicant regards as the invention.
Claim 3 is indefinite as the claim recites “wherein X1, X2, and X3—are a bond, wherein X1 is a substituted---X3 is a bond” and it is unclear what actually X1, X2 and X3 represent. The scope of the claim is unclear as the claim is ambiguous with respect to X1, X2 and X3. For compact prosecution, the claim was interpreted for X1, X2 and X3 as in claim 1.
Appropriate correction required.
Claim Rejections - 35 USC § 102
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 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1) and 102(a) (2) as being anticipated by Qiu (US 20180057658 A1).
Qiu discloses synthesis of various polythiol ligands with examples comprising treating polythiol with CM, such as triazine, alkane etc. with a+b> or =3, a=2, b=1 or 2 etc., X1-X6=bond, alkylene, C=O, or heteralkylene (reads on claims 1-8), such as
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With glycidyl ether or glycidyl ether with acrylate groups, same as formula V with FG=glycidyl ether; X7=bond or alkylene; X8=bond, R1A=R1B=H, alkyl, R2=alkoxy, alkyl; e=f>1, such as:
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(entire application).
Since the cited prior art reads on all the limitations of the instant claims 1-6 and 8, these claims are anticipated.
Claims 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1) and 102(a) (2) as being anticipated by Oswald (US 3625925).
Oswald discloses synthesis of various polythiol ligands with examples comprising treating polythiol with CM, such as alkane etc. with a+b> or =3, a=2, b=1 or 2 etc., X1-X6=bond, alkylene, C=O, or heteralkylene (reads on claims 1-8), such as
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With a compound of formula V with FG=acrylate, X7=bond or alkylene; X8= bond, O or any divalent organic radical, R1A=R1B=H, alkyl, R2=alkoxy, alkyl; e=f>1, (entire patent)
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Since the cited prior art reads on all the limitations of the instant claims 1-6 and 8, these claims are anticipated.
Claim Rejections - 35 USC § 103
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 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.
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 of this title, 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Oswald (US 3625925).
Determining the scope and contents of the prior art
Oswald discloses synthesis of various polythiol ligands with examples comprising treating polythiol with CM, such as alkane etc. with a+b> or =3, a=2, b=1 or 2 etc., X1-X6=bond, alkylene, C=O, or heteralkylene (reads on claims 1-8), such as
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With a compound of formula V with FG=acrylate, X7=bond or alkylene; X8= bond, O or any divalent organic radical, R1A=R1B=H, alkyl, R2=alkoxy, alkyl; e=f>1, (entire patent)
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Ascertaining the differences between the prior art and the claims at issue
Oswald discloses synthesis of various polythiol ligands with examples comprising treating polythiol with CM, such as alkane etc. with a+b> or =3, a=2, b=1 or 2 etc., X1-X6=bond, alkylene, C=O, or heteralkylene with a compound of formula V with FG=acrylate, X7=bond or alkylene; X8= bond, O or any divalent organic radical, R1A=R1B=H, alkyl, R2=alkoxy, alkyl; e=f>1, but fails to teach the process wherein compound of formula V has R8 as (C=O)-O.
Resolving the level of ordinary skill in the pertinent art
With regards to the above difference, Oswald discloses synthesis of various polythiol ligands with examples comprising treating polythiol with CM, such as alkane etc. with a+b> or =3, a=2, b=1 or 2 etc., X1-X6=bond, alkylene, C=O, or heteralkylene with a compound of formula V with FG=acrylate, X7=bond or alkylene; X8= bond, O or any diradical, R1A=R1B=H, alkyl, R2=alkoxy, alkyl; e=f>1. Thus, with the guidance provided by the cited prior art, it would have been prima facie obvious to a person of ordinary skill in the art with a reasonable expectation of success that compound of formula V may have R8 as any divalent organic radical including (C=O)-O and may undergo reaction as taught by the cited prior art with polythiol to make polythiol ligand.
Based on the above established facts, it appears that the teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have modified the elements as claimed by known methods with no change in their respective functions, and the modification would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Oswald discloses synthesis of various polythiol ligands with examples comprising treating polythiol with CM, such as alkane etc. with a+b> or =3, a=2, b=1 or 2 etc., X1-X6=bond, alkylene, C=O, or heteralkylene with a compound of formula V with FG=acrylate, X7=bond or alkylene; X8= bond, O or any divalent organic radical, R1A=R1B=H, alkyl, R2=alkoxy, alkyl; e=f>1.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. Further, there is a reasonable expectation of success that compound of formula V may have R8 as any divalent organic radical including (C=O)-O and may undergo reaction as taught by the cited prior art with polythiol to make polythiol ligand and can be made by teachings of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking the advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive at applicants process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PANCHAM BAKSHI whose telephone number is (571)270-3463. The examiner can normally be reached M-Thu 7-4.30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Milligan Adam can be reached at 571-2707674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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