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 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sawaguchi (JP 2009-209166A).
Regarding claims 1 and 4: Sawaguchi teaches a composition comprising an alicyclic structure-containing polymer, a hindered amine compound and a fatty acid diester of pentaerythritol and/or a fatty acid triester of pentaerythritol [0073; Examples]. Sawaguchi teaches that the pentaerythritol fatty acid esters are purified to reduce the weight loss under a heating temperature [0021].
Sawaguchi fails to teach an example of using a combination of a diester and a triester.
Being a very clear, alternate embodiment in Sawaguchi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a mixture of fatty acid diester of pentaerythritol and a fatty acid triester of pentaerythritol in the composition of Sawaguchi as the mold release agent. The skilled artisan would immediately envisage a 50/50 mixture of diester and triester.
Since the composition is the same as claimed, it will possess the claimed volatilization volume. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 2: Sawaguchi teaches the claimed amount [0073; Examples].
Regarding claim 3: the structures of Sawaguchi, a diester and triester, are very structurally similar to the claimed structures of a triester and a tetraester. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, paragraph II.A.4.(c).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sawaguchi (JP 2009-209166A).
Sawaguchi teaches an optical element [0080; Examples] comprising a composition comprising an alicyclic structure-containing polymer, a hindered amine compound and a fatty acid diester of pentaerythritol and/or a fatty acid triester of pentaerythritol [0073; Examples]. Sawaguchi teaches that the pentaerythritol fatty acid esters are purified to improve the weight loss under a heating temperature [0021].
Sawaguchi fails to teach an example of using a combination of a diester and a triester.
Being a very clear, alternate embodiment in Sawaguchi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a mixture of fatty acid diester of pentaerythritol and a fatty acid triester of pentaerythritol in the composition of Sawaguchi as the mold release agent. The skilled artisan would immediately envisage a 50/50 mixture of diester and triester.
Since the composition is the same as claimed, it will possess the claimed volatilization volume. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Response to Arguments
Applicant's arguments filed 10/5/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The applicant has made the argument that the examples of Sawaguchi test a single fatty acid ester in isolation. This is not persuasive because patents are relevant prior art for all that they contain and not just the preferred embodiments. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). See MPEP 2123. “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
Sawaguchi teaches three different embodiments: a pentaerythritol fatty acid diester, a pentaerythritol fatty acid triester, or a combination of a pentaerythritol fatty acid diester and a pentaerythritol fatty acid triester [0073]. The combination is a clear teaching of Sawaguchi. If the skilled artisan utilized a combination of the diester and triester, determining the ratio between the two of them is necessary. This is not “common sense” or “intuition”. It is a necessary consequence of the disclosure of paragraph [0073]. The skilled artisan, when considering a ratio, would immediately envisage a 50/50 mixture. It would be the first ratio attempted in routine experimentation. The claimed combination is clearly disclosed, and a 50/50 ratio is obvious.
Regarding the claimed property, since the composition is the same as claimed, it will possess the claimed volatilization volume. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
The applicant has made the argument that Sawaguchi does not provide a reasons basis for a tetraester. The applicant has misunderstood the position of the Office. The position of the Office is not that it would have been obvious to include a tetraester in Sawaguchi. The basis of rejection is the structural similarities of the compounds. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. The applicant has not demonstrated that the compounds do not have similar properties.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN E USELDING/ Primary Examiner, Art Unit 1763
