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 .
Specification
The use of the terms “Ultrasil®”, “Zeosil®”, “X50S®”, “VP Si 363®”, and “Amberlyst™” which are trade names or a mark used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1-4, and 9-14 objected to because of the following informalities:
Claim 1 states “A compound of formula I):”, should state “A compound of formula I)”
Claim 2 and 3 state “n is 0 (zero), should state, “n is 0”
Claim 4 states “R1 is bonded to the nitrogen atom (N), should state, “R1 is bonded to the nitrogen atom”
Claim 9 states “The compound of claim 1, the compound incorporated into a rubber mixture”, should state “The compound of claim 1, wherein the compound is incorporated into a rubber mixture”
Claim 10 states “The compound of claim 1, the compound incorporated in at least”, should state “The compound of claim 1, wherein the compound is incorporated into at least”
Claim 11 states “as the compound of claim 1, the compound”, should state “The compound of claim 1, wherein the compound”
Claims 12-14 states “The compound of claim 1, the compound”, should state “The compound of claim 1, wherein the compound”
Appropriate correction is required.
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 1-15 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.
Regarding Claims 11, 13, and 15, the phrase "such as" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 11 recites the phrase, “the compound used as an aging stabilizer”, which is ambiguous, describing a compound or possibly a method of use. Applicant is requested to clearly distinguish a category of invention under 35 USC 101 for each claim.
Regarding claim 14, the phrase "(decorating)” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is unclear if the claims are limited to paints and coatings in general or specifically limited to decorating paints and coatings, because it is unclear if the phrase within the parenthesis is part of the claimed invention or meant to limit the claim.
Claims 9-10 and 14 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 9-10, and 14 recite the limitation “the compound incorporated”, and the term “incorporated” is determined to be indefinite because it is unclear if incorporated is a mixture or an active method step. The metes and bounds of the claim do not distinguish between a claimed method (i.e. making a rubber mixture containing the claimed compound) versus claiming another product (i.e. a rubber mixture containing the compound).
Claim 12 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 12 recites the limitation “the compound produced as”, and the term “produced” is determined to be indefinite because it is unclear if the applicant is a claiming a method (i.e. making a rubber article containing the claimed compound) versus claiming another product (i.e. an article containing the compound).
Claim 15 contains the trademark/trade name “Amberlyst™ 15”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a strongly acidic, microporous polymeric ion-exchange resin and, accordingly, the identification/description is indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation “linear, branched and cyclic aliphatic C1 to C12 radicals, and aryl radicals, cyano radicals, halogen radicals”, and the claim also recites “preferably fluorine, bromine and chlorine, ester radicals, ketone radicals, ether radicals and thioether radicals” which is the narrower statement of the range/limitation.
In the present instance, claim 5 recites the broad recitation “R1 is a branched alkyl radical having 3 to 12 carbon atoms”, and the claim also recites “preferably 3 to 8 carbon atoms” which is the narrower statement of the range/limitation.
In the present instance, claim 6 recites the broad recitation “R1 is selected from 1,3-dimethylbutyl and cyclohexyl radicals”, and the claim also recites “R1 is preferably a 1,3-dimethylbutyl radical” which is the narrower statement of the range/limitation.
In the present instance, claim 7 recites the broad recitation “R4 and R5 radicals are the same and/or are each selected from the group consisting of unsubstituted, linear, branched and cyclic aliphatic C1 to C12 radicals, and aryl radicals”, and the claim also recites “R4 and R5 radicals are more preferably selected from the group consisting of methyl radicals, n-butyl radicals and phenyl radicals, and are most preferably methyl radicals.
In the present instance, claim 9 recites the broad recitation “the compound incorporated into a rubber mixture”, and the claim also recites “the rubber mixture preferably contains at least one diene rubber which is particularly preferably selected from the group consisting of” which is the narrower statement of the range/limitation.
In the present instance, claim 10 recites the broad recitation “the compound incorporated in at least one outer component of a tire”, and the claim also recites “the outer component is preferably a tread, a sidewall and/or a flange profile” which is the narrower statement of the range/limitation.
In the present instance, claim 11 recites the broad recitation the compound used as an aging stabilizer and/or antiozonant”, and the claim also recites “especially in vehicle tires and/or other industrial rubber articles such as, in particular, an air spring, a bellows, conveyor belt, strap,” which is the narrower statement of the range/limitation.
In the present instance, claim 12 recites the broad recitation “the compound produced as a rubber article”, and the claim also recites “in particular an air spring, a bellows, conveyor belt,…” which is the narrower statement of the range/limitation.
In the present instance, claim 13 recites the broad recitation “the compound used in oils, lubricants”, and the claim also recites “such as, in particular, fuels or operating media for engines” which is the narrower statement of the range/limitation.
In the present instance, claim 15 recites the broad recitation “converting the substances from step at) in the presence of a base”, and the claim also recites “more preferably potassium carbonate” which is the narrower statement of the range/limitation.
In the present instance, claim 15 recites the broad recitation “a catalyst”, and the claim also recites “more preferably copper iodide” which is the narrower statement of the range/limitation.
In the present instance, claim 15 recites the broad recitation “reacting the compound of formula B1) with hydrogen and a ketone or aldehyde”, and the claim also recites “preferably ketone” which is the narrower statement of the range/limitation.
In the present instance, claim 15 recites the broad recitation “providing the substances R4Li or R4Mg and R5Li or R5Mg”, and the claim also recites “preferably R4Li and R5Li, where R4 and R5 are preferably selected from the group consisting of linear, branched and cyclic aliphatic C1 to C12 radicals” which is the narrower statement of the range/limitation.
In the present instance, claim 15 recites the broad recitation “providing the substances R4Li or R4Mg and R5Li or R5Mg”, and the claim also recites “preferably R4Li and R5Li” which is the narrower statement of the range/limitation.
In the present instance, claim 15 recites the broad recitation “reacting the substance from step e1) with a Lewis acid”, and the claim also recites “preferably selected from the group consisting of boron Lewis acids such as, in particular, boron trifluoride diethyletherate, methanesulfonic acid, polyphosphoric acid, sulfuric acid, hydrochloric acid, phosphonic acid, trifluoroacetic acid, a mixture of 1,2-bis(ethenyl)benzene and 2- ethenylbenzenesulfonic acid, especially obtainable under the Amberlyst" 15 trade name, hydrogen bromide (HBr) and para-toluenesulfonic acid, more preferably boron trifluoride diethyletherate, to give the compound of formula I)” which is the narrower statement of the range/limitation.
In the present instance, claim 15 recites the broad recitation “where R3 is selected from the group consisting of linear, branched and cyclic aliphatic C1 to C12 radicals, and aryl radicals, cyano radicals, halogen radicals”, and the claim also recites “preferably fluorine, bromine and chlorine, ester radicals, ketone radicals, ether radicals and thioether radicals” which is the narrower statement of the range/limitation.
In the present instance, claim 15 recites the broad recitation “where R2 is selected from the group consisting of linear, branched and cyclic aliphatic C1 to C12 radicals, and aryl radicals, cyano radicals, halogen radicals”, and the claim also recites “preferably fluorine, bromine and chlorine, ester radicals, ketone radicals, ether radicals and thioether radicals” which is the narrower statement of the range/limitation.
In the present instance, claim 15 recites the broad recitation “where the R4 and R5 radicals are independently the same or different and are each selected from the group consisting of linear, branched and cyclic aliphatic C1 to C12 radicals, and aryl radicals, cyano radicals, halogen radicals”, and the claim also recites “preferably fluorine, bromine and chlorine, ester radicals, ketone radicals, ether radicals and thioether radicals” which is the narrower statement of the range/limitation.
In the present instance, claim 15 recites the broad recitation “R4 and R5 radicals are independently the same or different”, and the claim also recites “and are each preferably selected from the group consisting of linear, branched and cyclic aliphatic C1 to C12 radicals, preferably consisting of linear C1 to C12 radicals, more preferably consisting of linear C1 to C6 radicals, most preferably methyl radicals” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The term “radical” in claims 1, 5, 6, 7, and 15 is a relative term which renders the claim indefinite. The term “radical” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The general definition of a radical is an atom, molecule, or ion with at least one unpaired valence electron in its outer shell, but it seems that the applicant is conflating the term “group” with “radical” in the Markush structure. Examiner suggests replacing the word “radical(s)”, with “group(s)”, to describe substituents more consistently with what is known in the art.
Closest Prior Art
The closest prior art is Sparks (Allen K Sparks, “Hydrocarbylamino Phenoxazines and Phenazines”, US 3413291 A, Pub. Date: 1968-11-26).
Sparks discloses hydrocarbylamino phenoxazine compounds useful as antioxidants for plastics, lube oils, and other organic substrates. Sparks discloses the invention is related to the stabilization of organic substances related to a novel method of preventing deterioration of the organic substance during storage and/or use (Col. 1, lines 11-22).
Sparks teaches that organic substances include hydrocarbon distillates such as fuels and lubricating oils, greases, plastics, etc., and another organic substance which undergoes deterioration due to oxidation is rubber, which may be synthetically prepared or naturally occurring. Sparks teaches that synthetic rubbers include SBR rubber (copolymer of butadiene and styrene), Buna N (copolymer of butadiene and acrylonitrile), butyl rubber (copolymer of butadiene and isobutylene), neoprene rubber (chloroprene), and others (Col. 1, lines 61-70).
Sparks discloses “The compounds of the present invention also were evaluated as additives in rubber. The rubber used in this example is a natural rubber tread stock of the following recipe” (Col. 10, lines 63-66).
Sparks discloses 2-(N-isopropyl- amino)-phenothiazine, herein example 3 (Col. 8, lines 48-49), bottom left, of the general Formula, bottom right.
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Example 3 disclosed in Sparks, overlaps with instant formula 1), see below. To map example 3 disclosed in Sparks, with instant formula 1), n is 0 and R3 is absent, m is 0 and R3 is absent, and R1 is a branched C3 alkyl.
Sparks does not teach Sulfur in example 3, as a carbon atom, and Sparks does not teach additional substituents, in positions R4 and R5 in instant Formula 1), see below.
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It would not have been obvious, for one of ordinary skill to take the method disclosed in Sparks for preventing deterioration of the organic substance during storage and/or use with hydrocarbylamino phenoxazine compounds, such as example 3, and replace the Sulfur atom with a carbon atom, and additionally add 2 substituents that correspond to substituents R4 and R5 in instant Formula 1), because there is no motivation known in the art to make three modifications to a single compound.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CIERRA M ROCHELLE whose telephone number is (571)272-9962. The examiner can normally be reached Mon-Fri 8:00-5:00 EST.
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/C.M.R./ Examiner, Art Unit 1627
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
