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 .
Claim Rejections – 35 U.S.C § 112
The following is a quotation 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.
Claims 1-10 are rejected under 35 U.S.C. § 112(a), because the specification does not reasonably provide enablement for copolymers comprising 38 wt% of vinyl acetate units concomitantly with the further recited amounts of monomer units. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurately in scope with these claims.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to : (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Applying these factors to independent claim 1: the claims (factor (a)) recite copolymers including an amount of vinyl acetate units (38 wt%) and amounts of further monomer units which sum to 71.7 wt% at a minimum. The claims thus recite copolymers including an amount of monomer units that exceeds 100 wt%. The invention (factor (b)) is directed to copolymers. The prior art (factors (c)-(e)) does not, to the examiner’s knowledge, include a disclosure of the manner of making a material that includes its component(s) in an amount of more than 100 wt% of the material. The present application (factors (f)-(g)) does not include any direction as to the manner of making a material that includes its component(s) in an amount of more than 100 wt% of the material.
It is concluded that an undue amount of experimentation would be required to make the claimed copolymers that include 38 wt% of vinyl acetate units alongside the further recited monomer units which sum to 71.7 wt% at a minimum.
Claim Rejections – 35 U.S.C. § 112(b)
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.
Claim 4 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 4 depends upon claim 2, and claim 2 recites a chemical formula of a repeating unit which includes a cationic moiety “M1+”. Claim 4 recites limitations regarding moiety M1, and the claim recites chemical formulas 2 and 4 which are neutral amine moieties and chemical formulas 3 and 5 which are cationic ammonium moieties.
Because of the inconsistency between the charge of the cationic moiety “M1+” recited in base claim 2 and the charges of chemical formulas 2-5 recited in claim 4, claim 4 does not set forth with reasonable clarity whether they are intended to be limitations of the neutral moiety M1 or else of the cationic moiety M1+.
Additionally, claim 4 recites a chemical formula 5 which includes a dative bond originating at a nitrogen end and terminating at an empty space. Because of the undefined electron acceptor of the dative bond, the claim does not set forth the scope of the chemical formula with reasonable clarity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
Prosecution Insights