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 .
DETAILED ACTION
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 16 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the recited “Use of” is directed to non-statutory subject matter. The examiner suggests “A method of using” instead.
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 2, 3, 6, 7, 10, 11, 12, 13 and 15 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.
The recited “preferably ---” in claims 2, 3, 6, 7, 11, 12, 15 and “more preferably ---” in claim 15 are indefinite since they would be an expression of a range within a range. Either deletion or separate dependent claims reciting narrower ranges is suggested.
The recited “.” after S100, S200, S300 and S400 of claim 10 and S401 and S402 of claim 13 are improper since the “.” can be present at the end of claim only. The examiner suggests “;” instead.
The recited “-(Polyoxyalkylene)1-” and “-(Polyoxyalkylene)2-” of claim 5 would lack an antecedent basis and they should be “-(Polyoxyalkylene1)-” and “-(Polyoxyalkylene2)-” recited in formula (I).
EXAMINERS’ COMMENT
CN 113881418 A published on January 4, 2022 having coinventors different from the instant coinventors would be a valid prior art at this time since applicant failed to submit a certified English translation of the Chinese Priority documents, CN 20210967009.X filed on August 23, 2021. Thus, the effective filing date of the instant application would be August 19, 2022 for PCT/CN2022/113592. Further, there is no evidence that the instant application would be qualified under 35 U.S.C. 102(b) Exceptions.
The front page of CN 113881418 A shows that it was published as WO 20220022264 A1 (Jan. 6, 2022). Machine translated WO teaches that R1 and R2 of formula (1) are independently selected from H or C1-C40 hydrocarbyl in lines 4-5 of page 3. Although the C1-C40 hydrocarbyl would encompass the instant cyclohexyl group of the recited formula (I-0) of claim 1, WO does not fairly teach or suggest the instantly recited limitation (i.e., at least one of R1, R2, R5 and R6 is not H) of claim 1 and thus the examiner does not see any motivation further to introduce C1-C30 hydrocarbyl to the cyclohexyl group falling within scope of the C1-C40 hydrocarbyl taught by WO.
CLAIM ALLOWANCE
Claims 1, 4, 8, 9 and 14 are allowed.
EXAMINER’S COMMENT
Claims 2, 3, 6, 7, 10, 11, 12, 13, 15 and 16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Machine translated RU 2666163 C1 (Sep. 6, 2018) listed in the IDS of December 30, 2025 is enclosed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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