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 .
DETAILED ACTION
Claims 1-27 of H. Kawashima et al., US 18/835,842 (Feb. 9, 2023) are pending. Claims 1-20 and 23-27, drawn to non-elected Groups (I) and (III)-(V) are withdrawn from consideration pursuant to 37 CFR 1.142(b). Claims 21-22 are under examination on the merits and are rejected.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group (II), Claims 21-22, drawn to a heterocyclic compound, without traverse, in the reply filed on June 17, 2025. Claims 1-20 and 23-27, drawn to non-elected Groups (I) and (III)-(V) are maintained as withdrawn from consideration pursuant to 37 CFR 1.142(b). The restriction requirement maintained as FINAL.
Withdrawal Claim Objections
Claim objections are withdrawn in view of Applicant’s amendments.
Withdrawal Rejections 35 U.S.C. 112(b)
Rejection of claims 21 and 22 under 35 U.S.C. 112(b) as indefinite because it is unclear what meaning Applicant intends for terms “monovalent”, “divalent”, “tetravalent”, or “linked” in the claims’ context is withdrawn in view of Applicant’s amendments cancelling these terms.
Withdrawal Claim Rejections - 35 USC § 102 (AIA )
Rejection of claims 21 and 22 under 35 U.S.C. 102(a)(1) as being anticipated by K. Kimura, JP 2003335754 (2003) (“Kimura”) is withdrawn in view of Applicant’s amendments.
Maintained Objections to the Specification
The specification is objectionable because numerous chemical drawings (and/or chemical drawing labels) are too faint/garbled to discern and/or are not likely to transpose in publication. The replacement pages submitted by Applicant on December 19, 2025 do not cure the issue and are still too faint/garbled to discern and/or are not likely to transpose in publication. See for example, structures (AAA1) at substitute specification page 42, where it is unclear what symbol is present on the bond. At page 46, the text in parenthesis is not decipherable and, for example, the formula of the 12th listed species is not clear. At page 82, the symbol or number that appears under the “F” in (AAB1) is not decipherable. The same issue is present at substitute specification page 110. At substituted page 50, the structure of (AAA89) is not clear. Numerous other instances occur. Applicant is required to submit specification replacement pages addressing all such instances where structures/writing are too faint or garbled.
New Claim Rejections 35 U.S.C. 112(a) -- New Matter
The following is a quotation of the first paragraph 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.
Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. MPEP § 2173.05(i). Note however, a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. MPEP § 2173.05(i) (citing Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993))1. Rather, as with positive limitations, the disclosure must only 'reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.' ... While silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure. MPEP § 2173.05(i).2
The Rejection
Claims 21 and 22 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The rejection is on the grounds that the added limitation of “with the proviso that Rf301 is not a heteroaromatic group” to claim 21 is not supported by the application as filed.
1 . . . Rf301 each independently denotes a moiety with 2 or more carbon atoms containing 3 or more fluorine atoms; with the proviso that Rf301 is not a heteroaromatic group . . .
The specification does literally recite this claim limitation nor provide sufficient disclosure such that a skilled artisan would understand that “with the proviso that Rf301 is not a heteroaromatic group” is necessarily present in a disclosure
Applicant does not point out in the Reply where support for this amendment is found in the application as filed. Thus, a prima facie case of non-support is made because there does not appear to be a written description of this limitation in the application as filed. MPEP § 2163(II)(A). MPEP § 2163(II)(A); MPEP § 2163.04.3
The most relevant portion of specification regarding the meaning of Rf301 recites as follows:
[Rf301]
Rf301 each independently denotes a moiety with 2 or more carbon atoms containing 3 or more fluorine atoms.
[0281] In Rf301, the ratio of the number of fluorine atoms to the number of carbon atoms is preferably 50% or more, more preferably 60% or more, still more preferably 70% or more, still more preferably 80% or more.
[0282] Rf301 may have any molecular structure and may be linear, branched or cyclic.
[0283] ii each independently denotes an integer in the range of 1 to 6. ii preferably denotes an integer in the range of 1 to 5, more preferably an integer in the range of 1 to 4, still more preferably an integer in the range of 1 to 3, still more preferably 1 or 2.
[0284] Rf301 preferably has a structure represented by the following formula (311): [0285] [Chem. 79]
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wherein Rf311 each independently denotes a linear, branched or cyclic aliphatic hydrocarbon group with 1 to 18 carbon atoms optionally substituted with a fluorine atom;
L311 each independently denotes a linear, branched or cyclic divalent aliphatic hydrocarbon group with 1 to 18 carbon atoms optionally substituted with O, S or a fluorine atom, or a vinylene group that may form a ring;
a311 each independently denotes an integer in the range of 0 to 4;
a312 each independently denotes an integer in the range of 1 to 4; and
in each Rf311, the ratio of the number of carbon atoms directly bound to a fluorine atom to the number of carbon atoms constituting the structure is preferably 30% or more, more preferably 40% or more, still more preferably 50% or more, still more preferably 60% or more, particularly preferably 70% or more.
[0287] Rf311 is each independently denotes methyl group, an ethyl group, a n-propyl group, anbutyl group, a n-pentyl group, a n-hexyl group, a n-heptyl group, a n-octyl group, an alkyl group having structural isomerism with these alkyl groups, a cyclopropyl group, a cyclobutyl group, a cyclopentyl group, a 1-methylcyclopentyl group, a cyclopentylmethyl group, a cyclohexyl group or an adamantyl group, each of which may be an optionally substituted.
[0288] From the perspective of being able to suppress the formation of a metal film on a film surface, L311 more preferably each independently denotes O, S or a methyl group, an ethyl group, a n-propyl group, a n-butyl group, a n-pentyl group, a n-hexyl group, a n-heptyl group, a n-octyl group, an alkyl group having structural isomerism with these alkyl groups, a cyclopropyl group, a cyclobutyl group, a cyclopentyl group, a 1-methylcyclopentyl group, a cyclopentylmethyl group, a cyclohexyl group or an adamantyl group, each of which may be substituted with a fluorine atom, or a vinylene group that may form a ring.
[0289] a311 preferably each independently ranges from 0 to 3, more preferably 0 to 2.
[0290] a312 preferably each independently ranges from 1 to 3, more preferably 1 to 2.
The number of carbon atoms in the moiety represented by the formula (311) is preferably 1 or more and 36 or less, more preferably 1 or more and 30 or less, still more preferably 1 or more and 24 or less, still more preferably 1 or more and 20 or less, particularly preferably 1 or more and 16 or less.
[0291] The number of carbon atoms in Rf301 is 2 or more. The number of carbon atoms in Rf301 is preferably 2 or more and 36 or less, more preferably 2 or more and 30 or less, still more preferably 2 or more and 24 or less, still more preferably 2 or more and 20 or less, particularly preferably 2 or more and 16 or less. (Specific Example of Rf301 )
Rf301 may have a structure, for example, represented by one of the following (AAA1) to (AAA126).
Specification at pages 215-281 (emphasis added). Nowhere in the above cited specification excerpt is a “heteroaromatic group” even mentioned with respect to claim variable Rf301.
It is noted that it is possible that the “written description requirement [for a negative limitation] may be satisfied when a skilled artisan would understand the specification as inherently disclosing the negative limitation”. Novartis, 38 F.4th at 1017. But here, there is no indication in application as filed whereby one could reason that “a heteroaromatic group” is contraindicated or inherently precluded from variable Rf301. Rather, the specification states that
[0282] Rf301 may have any molecular structure and may be linear, branched or cyclic.
Specification at page 215, [0282].
Dependent claims 22 does not cure the issue. Claim 22 recites the alternative of “L311 independently denotes . . . a vinylene group that may form a ring”. The specification does not give any guidance regarding the structural meaning of the claim 22 alternative of L311 as a “vinylene group that may form a ring”. Under a plain meaning/broadest reasonable interpretation, the genus of “vinylene group that may form a ring” also encompasses certain “heteroaromatic groups”, for example pyridine. MPEP § 2111. Here, Applicant seeks to exclude such “heteroaromatic groups” from claim 22 by the subject proviso but, per above, written description support for the amendment is lacking.
New Claim Rejections - 35 USC § 102 (AIA )
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
35 U.S.C. § 102(a)(1) over S. Pyo et al., KR 20130117726 (2013) (“Pyo”)
Claims 21 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by S. Pyo et al., KR 20130117726 (2013) (“Pyo”).
Pyo discloses the following compound 62 which meets the limitations of claim 21, compound (302), as follows:
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Pyo compound 62, page 11.
The limitations of dependent claim 22 are met by the same compound as follows.
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Claim 22 is therefore anticipated.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 In Parks, 30 USPQ2d 1234, the board found that the negatively claimed feature "in the absence of a catalyst" in a process claim was implicitly supported based on the examples that used high temperatures to perform the process, which would have called for a catalyst but no catalyst was used. Id. at 1236. In other words, the specification in Parks provided a basis where one could reason from the process steps that there was support for the "absence of a catalyst" feature.
2 In Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Cir. 2022), the court held that “‘the hallmark of written description is disclosure.’” Id. at 1017. “Silence is generally not disclosure.” Novartis, 38 F.4th at 1017. Thus, for negative limitations, the specification must describe a reason to exclude the relevant element or feature. Id. at 1016. Alternatively, “it is possible that the written description requirement [for a negative limitation] may be satisfied when a skilled artisan would understand the specification as inherently disclosing the negative limitation.” Id. at 1017.
3 With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. MPEP § 2163(II)(A) (citing Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4, 83 USPQ2d 1373, 1376, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.").