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 .
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 1-18 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.
Instant claim 1 discloses two formulae for two separate cross-linking agents, the formulae are:
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At the same time the applicants indicated in claim 1 that these formulae comprise two or more hydroxy groups or salts thereof.
Under broadest reasonable interpretation, the formulas as depicted in claim 1 do not permit substitution or use of any other functional group other than hydrogen. Use of hydrogen in these situations is inherently implied. While applicants can be their own lexicographers, the lexicography does not apply in this situation. If lexicography does applicable, it would go against international IUPAC standard used as chemical identifier system.
The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Subsequently, dependent claims define completely different formulae which very distinct from those of claim 1. This further renders dependent claims as indefinite because claims 2-18 depend on already rejected claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As mentioned above instant claim 1 teaches following two formulae:
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Dependent claims 3 and 4 include structure of b1 fused with benzene ring, wherein presence of benzene ring is not contemplated by b1 as depicted in instant claim 1.
Claims 3 and 4 further fail to narrow the scope of instant claim 1 since at the claims further allow other substituents outside the scope of any claimed formulae. Additionally claims
Furthermore, claims 3 and are duplicates reciting the same exact limitation, one of the claims has to be cancelled.
Dependent claims 5 and 6 disclose structure b1 not only fused with benzene ring, but benzene ring is also substituted with hydroxy group. Not only is the benzene ring outside of the scope of the instant invention, but even if hydroxy groups were present in claim 1 they would be present in benzofuranone ring. Consequently claims 3-6 fail to narrow the scope of instant claim 1.
Dependent claim 7 discloses structure of b2 that is fused with benzene ring, which is not contemplated in claim 1. Dependent claim 8 further teaches use of hydroxyl groups which is not contemplated in the formula b2 of instant claim 1. Consequently claims 7 and 8 fail to further limit the scope of claim 1.
Dependent claims 9 and 10 disclose structure b2 that is not only fused with benzene but hydroxy substituted benzene in addition to pendant OH group. Structures b2-3 and b2-4 also were not encompassed by instant claim 1 as possible variation of the b2 structure. As such claims 9-10 also fail to further narrow the scope of claim 1.
Claim 11 discloses use of crosslinking compound b1 along with salt of compound b1, which were also not encompassed by the general formula b1. Claim 11 fails to further narrow the scope of instant claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Suggestion: since applicant’s specification does not provide formulae b1 and b2 where the substituents such as R substituents are defined (here the location of OH groups). Therefore, the only way that the applicants can overcome 112 2nd paragraph rejection is by including compound b2-3 of claim 5 in lieu of b1 and compound b2-3 of claim 9 as compound b2.
Prior Art
The examiner attempted to search the instant invention, however, the only benzofuranone compounds for use with polymers in general, included following structures:
US 5,516,920 to Nesvabda:
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Here the oxygen in the 5 membered ring is in 2 location not 3, which makes a different since they are not considered equivalent. The difference between the structure of benzfuranone of Nesvabda and that of instant invention leads to distinct electronic, stearic and reactivity profiles. In Nesvabda the compound is less sterically hindered resulting in more delocalized charge and better suitability for substitution than its presently claimed compound. As such one of ordinary skill in the art would not compound of Nesvabda in lieu of instantly claimed formula b1 because the two different compound would provide two different results, specifically crosslinking density. There was no art found for hydroxy substituted formula b2. See also US 2005/0101729 to Papenhufs.
WO 2012/081570 taught 6-hydroxy-3(2H)-benzofuranone however, the compound was not utilized in polymer composition, and there would have been no motivation to not only use it with polymers but especially with claimed fluoroelastomers. The use of the compounds is for pharmaceutical composition.
In both instances any references found with instantly claimed compounds were applied for and published after applicant’s filing date, therefore under AIA they do not qualify as a prior art.
Having said that updated search will be conducted, once applicants correctly state the scope of claim 1 followed by scope narrowed by the dependent claims.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767
October 5, 2026
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