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 § 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 1-4 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. Claim 1 recites the limitation "the percentage of volatilization volume". There is insufficient antecedent basis for this limitation in the claim.
Claim 5 is 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. Claim 5 recites the limitation "the percentage of volatilization volume". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
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.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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