DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The Preliminary Amendment filed on November 14, 2024, have been received and entered.
Claim Disposition
3. Claim 2 has been cancelled. Claims 1 and 3-9 are pending and are under examination.
Information Disclosure Statement
4. The Information Disclosure Statements filed on November 14, 2024, has been received and entered. The references cited on the PTO-1449 Form have been considered by the examiner and a copy is attached to the instant Office action. Note that some references has been lined through based on improper date citations.
Drawing
5. The Drawings filed on November 14, 2024, are accepted by the examiner.
Specification Objection
6. The specification is objected to for the following informalities:
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The following is suggested: "Method for producing [[from]] fatty alcohol[[s]] monomers used in [[for producing]] the production of [[various]] synthetic resins".
Claim objection
7. Claims 1 and 3-9 are objected to for the following informalities:
For clarity and precision of claim language it is suggested that claim 1 is amended to recite “a method for producing a monomer from fatty alcohols, [[steps of]] comprising:
synthesizing a dialkyl ether compound from a fatty alcohol,
fermenting the dialkyl ether compound……. at both ends, wherein the monomers are used to produce synthetic resin. The dependent claims hereto are also included.
For clarity and precision of claim language it is suggested that claim 8 is amended to read, “….wherein the decomposing [[decomposition]] is by hydrolysis”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
8. Claims 1 and 3-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or
a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claimed invention is directed to “a method for producing a monomer for producing synthetic resin (see claim 1 in its entirety). The invention as claimed is not adequately described because the first step is to ferment a dialkyl ether and the specification discloses that the synthesizing a dialkyl ether compound from fatty alcohol is the first step before fermenting. In addition, the claimed invention does not adequately describe the genetically recombinant transformant used to produce the dialkyl ether. Further, the language in the claims recite that the dialkyl ether compound is functionalized at both ends. The specification discloses that monomers are carboxylated, hydroxylated or animated at both ends through a process of hydrolyzing (see pages 1-4 of specification). The claimed invention encompasses a large variable genus of genetically recombinant transformant, microorganism, and beta oxidation pathways from any organism to be blocked in addition to over expression of enzymes, thus not adequately described.
The claimed invention is overly broad and not commensurate in scope with the disclosure in the specification. Thus the claimed invention is not adequately described.
The specification fails to provide a representative number of species for the claimed genus to show that applicant was in possession of the claimed genus. A representative number of species means that the species, which are adequately described, are representative of the entire genus.
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, disclosure of drawings, or by disclosure of relevant identifying characteristics, for example, structure or other physical and/or chemical properties, by
functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), states that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed" (See page 1117). The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed" (See Vas-Cath at page 1116). The skilled artisan cannot envision the detailed chemical structure of the encompassed genus, and therefore, conception is not achieved until reduction to practice has occurred, regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method of isolating it. The compound itself is required. See Fiers v. Revel, 25 USPQ2d 1601 at 1606 (CAFC 1993).
Therefore, for all these reasons the specification lacks adequate written description, and one of skill in the art cannot reasonably conclude that the applicant had possession of the claimed invention at the time the instant application was filed.
Conclusion
9. No claims are presently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOPE A ROBINSON whose telephone number is (571) 272-0957. The examiner can normally be reached 9-5pm on Monday to Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Mondesi can be reached on (408) 918-7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOPE A ROBINSON/Primary Examiner, Art Unit 1652
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