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 1-7 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.
In claim 1 and throughout the claims the phrase “optionally substituted N-C7-14” is indefinite because it is unclear whether a “N-C7-14” substitute is required in the compound. It is unclear whether the type of “N-C7-14” substitute is optional or that the compound may or may not have a “N-C7-14” substitute.
In claim 7, line 3, the phrase “is optionally substituted by a substituent(s)” is indefinite because it is unclear whether a substitute is required in the compound. It is unclear whether the type of substitute is optional or that the compound may or may not have a substitute.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 6782961.
Regarding claim 1, JP ‘961 teaches a process of generating carbon dioxide at normal temperature and pressure (Paragraph [0046]). The process may include adding a carbon dioxide generating agent to a solvent (Paragraph [0075]). The carbon dioxide generating agent may be 3- (aminomethyl) benzyl] carbamic acid (Example 1), which is a N-C7-14 aralkylcarbamic acid.
Regarding claim 2-3, the solvent may be an alcohol (Paragraph [0075]).
Regarding claim 4, the solvent may be used in amounts as recited in instant claim 4 (see examples and Table 1 of Paragraph [0086]).
Regarding claim 5, the substitutes may include at least C1 – C6 aryl groups (Paragraph [0026]).
Regarding claim 6, the carbon dioxide generating agent may be “derived from” the list of compounds in claim 6. Claim 6 is considered a product-by-process claim. [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 7, The carbon dioxide generating agent may be 3- (aminomethyl) benzyl] carbamic acid (Example 1), which contains a C1 alkyl substitute.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES A FIORITO whose telephone number is (571)272-9921. The examiner can normally be reached Monday-Friday 9AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMES A FIORITO/Primary Examiner, Art Unit 1731
Prosecution Insights