DETAILED ACTION
This communication responds to the application and amended claim set filed July 16, 2024, and the Response to Restriction Requirement filed July 10, 2026. Claims 1-21 are currently pending.
Non-elected claims 4-21 are WITHDRAWN.
Claims 1-3 are REJECTED for the reasons set forth below. Claims 2 and 3 are rejected under 35 USC 112, but otherwise contain allowable subject matter.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-3, in the reply filed on July 10, 2026 is acknowledged. Claims 1-3 are under examination.
Priority
This application is the national stage entry of PCT/JP2023/005701, filed February 17, 2023, which claims priority to JP 2022-052197, filed March 28, 2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 2 and 3 are 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.
Regarding claim 2, it is unclear how the “composition” can have a Mw. Generally, Mw describes the weight average molecular weight of a polymer or a series of comparable compounds that are similar (e.g., in this case, where n or whether the structure of Formula (2) is present). Here, though, the “composition” may contain any number of unrecited components – solvents, additives, fillers, etc. The examiner invites Applicant to clarify.
Regarding claim 3, the language “in which any hydrogen atom may be substituted with the structure of Formula (2) is inconsistent with the language of claim 1, which recites that the structure of Formula (2) must be present when there is a carbonyl group present in X, which is the case for both Formulae (3) and (4) of claim 3. The examiner invites Applicant to clarify.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Keita et al. (US 5,741,831).
Regarding claim 1, Keita teaches the following compound:
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(col. 5, lines 60-65.) R1 is either hydrogen or methyl. (col. 6, line 43.)
The difference between the above compound of Keita and the compound represented by Formula (1) of claim 1 is that n of Keita is 4, which is outside the claimed range of 5 or more. However, 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." (MPEP 2144.09(I) (quoting In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979)).) Compounds that are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. ((MPEP 2144.09(II) (citing In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977)).) In this instance, because the compound of Keita is an adjacent homolog to the compound represented by Formula (1) when n = 5, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the compound represented by Formula (1) in claim 1.
Allowable Subject Matter
Claims 2 and 3 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 2, the compound of Keita does not have a molecular weight that is within the range recited in claim 2.
Regarding claim 3, after a thorough and complete search, the examiner cannot find prior art teaching or fairly suggesting a compound that corresponds to either Formula (3) or (4), especially if the structure of Formula (2) is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 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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CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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