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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5 in the reply filed on 03/09/26 is acknowledged. Claims 6-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 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.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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 or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites a water-repellent agent comprising a porous particle containing a biodegradable polyester as a main component, wherein the water-repellent agent is other than a mold release agent. Applicant does not have support for “is other than a mold release agent.”
There are 4 instances of the use “mold” within Applicant’s specification. Two are at Claims 1 and 6 and at ¶¶ 0075 and 0079. ¶ 0075, states “The water-repellent agent can be used as an external treatment agent (surface-treating agent) or an internal treatment agent. The water-repellent agent can be used as a repellent agent (water-repellent agent, oil-repellent agent, water- and oil-repellent agent), a soil resistant agent, a soil release agent, a release agent or a mold release agent,” and at ¶ 0079, states “The water-repellent agent can be used also as an external mold release agent.” These are both positive recitations and do not support “other than a mold release agent.”
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 1-5 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.
Claims 1-5 all recite “water repellent” but do not define what makes it water repellent in their specification or set the parameters within the claims. Simply, the presence of the polyester alone cannot define the hydrophobic nature. Polyester is inherently water resistant but not water repellent. Water repellent materials are treated to become water repellent and water resistant materials resist water to some extent but water will eventually penetrate through and as such there is a distinction and neither are defined in the specification. Please clarify what is meant here and how water repellency is attained.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by JP 2009 144012A issued to Akimoto et al.
Akimoto et al. teach a method for producing porous fine particles of a biodegradable polyester resin by an industrially inexpensive process without using a special apparatus. They teach making porous polylactic acid (PLA) particles having a size of 30-65 µm, wherein the particles are obtained by dissolving PLA in 1.3-dioxalane at 70 °C, cooling the solution to 10 °C and adding of methyl alcohol, which induces the formation of the particles. Water may be used but in minimal amounts. As PLA is used, it is an aliphatic polyester. See Abstract, Examples 1-5, ¶¶ 0021-0025; Tables 1 and 2 and Figures 1-4]. The particles disclosed in Examples 1-5 are considered to have a water repellent result.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by EP 2660 272 B1 issued to Takezaki et al.
EP 2660 272 B1 issued to Takezaki et al teach porous particles having a size of 10-60 µm and comprising predominantly PLA. As PLA is used, it is an aliphatic polyester. The particles are obtained by dissolution of PLA in an ether-based solvent followed by the addition water, which induces the formation of the particles. The particles disclosed in Examples 1-6 are considered to have a water repellent result. See Examples 1-6; ¶¶ 0128-0133; Tables 2 and Figures 1-3.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPUB 20150183928A1 issued to Takezaki et al. teaches a process of producing polylactic acid-based resin microparticles and polylactic acid-based resin microparticles.
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/Arti Singh-Pandey/
Primary Patent Examiner
Art Unit 1759
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