DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on May 18, 2026. Claims 1-17 are pending in the application.
Status of Objections and Rejections
All rejections from the previous office action are withdrawn in view of Applicant’s amendment. New grounds of objections and rejections are presented as follows.
Election/Restrictions
Applicant elected without traverse of Group I, claims 1-2, and Species A1 in the reply filed on August 21. As a result, claims 1-2 (Formula 1, 5, 8) are under examination, and claims 3-12 and other Species in claims 1-2 are withdrawn from consideration.
Newly submitted claim(s) 1 directed to non-elected Species, i.e., Species A2-A4 (Formula 2-4), and C2 (Formula 9). Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 13 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 recites the oxidation-reduction polymer has a structure of Chemical Formula 1, which does not further limit claim 1 on which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mao (US 2016/0296147) in view of Zabarska (N. Zabarska, CuAAC click reactions for the design of multifunctional luminescent ruthenium complexes, Dalton Trans. 2016(45), pp. 2338-51).
Regarding claims 1 and 13, Mao teaches an oxidation-reduction polymer (¶2: transition metal complexes with at least one bidentate ligand containing at least one imidazole ring) for an electron transport medium of an electrochemical biosensor (¶2: the use of the transition metal complexes as redox mediators; ¶3: electrochemical sensors), having the structure of Chemical Formula 1:
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244
224
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(e.g., p. 16, ¶106: Formula 23)
wherein,
M is a transition metal Os (Formula 23: Os);
L1 and L2 are combined with each other to form a bidentate ligand Chemical Formula 5;
L3 and L4 are combined with each other to form a bidentate ligand Chemical Formula 5;
L5 and L6 are combined with each other to form a bidentate ligand Chemical Formula 5;
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104
156
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(e.g., p. 12, Table 1: complex VX has three pairs of two imidazole rings the same as chemical Formula 5, i.e., each pair of L1 and L2, L3 and L4, and L5 and L6 having a bidentate ligand with the transition metal Os; Examiner notes here that all six rings are five-membered rings);
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226
366
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Here, the R1 to R6 are each independently selected from an unsubstituted alkyl group having 1 carbon atom (compound Q: indicating the group as of Chemical Formula 5 having R1-R6 that are alkyl group having 1 carbon atom, i.e., CH3);
the Ad is a primary amine group (¶104: Ω is the reactive group; ¶170: such as an amine; e.g., p. 13, Formula 16);
the X is a counter ion (¶57: X represents counter ions).
To clarify the structures of Formula 1 of the instant application and Formula 23 of Mao, the annotated structures are shown as follows:
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422
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, corresponding to
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428
396
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.
Specifically, seg. B of Formula 23 in Mao and seg. B of the recited Formula 1 are corresponding to each other as follows:
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Further, Mao discloses the spacer (L or G in the middle of two linear –(CH2)m- groups) couples the transition metal complex to the polymeric backbone (¶94). The spacer includes either one non-cyclic functional group (¶94: e.g., -S-) or a heterocycle or aryl group (¶98: e.g., poly(4-vinylpyridine) or poly(N-vinylimidazole)). Examiner notes that the chemical structure of N-vinylimidazole is a five membered imidazole ring with a vinyl group attached to one of the nitrogen atoms:
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136
138
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.
Mao further teaches the transition metal complexes can be directly or indirectly attached to the polymeric backbone, depending on the reactive groups on the complex and the polymeric backbone, e.g., the pyridine group or the imidazole group, that can form a covalent bond with a reactive group, e.g., an amine of the transition metal complex (¶170), see Table 2 (p. 13): e.g., imidazole reactive group.
Mao does not explicitly disclose the spacer “G” is as shown:
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290
444
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.
However, Zabarska teaches click chemistry for synthesis of ruthenium complexes ([Abstract]). The ruthenium complex can be synthesized via three approaches, click to chelate, click then chelate, or chelate then click, to form a triazole containing chelating ligand after the coordination to a metal center with triazole as one of the chelating units (Fig. 3; p. 2339, section 1.2). Zabarska teaches the triazole unit does not take part in the coordination (Fig. 3; p. 2339, section 1.2), annotated as:
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546
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This triazole unit can be used to graft the ruthenium complex to a polymer chain (p. 2346, Fig. 27), annotated as
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458
876
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.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mao by incorporating the triazole unit (corresponding to “G” of the Formula 23) into the seg. B to graft the ruthenium complex on the polymeric carbon backbone as taught by Zabarska because the triazole unit is a suitable spacer for grafting the ruthenium complex to a polymer chain. Here, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. MPEP 2143(I)(A).
Mao further discloses that m (corresponding to claimed c) and m’ (corresponding to claimed b) are the same and are typically in the range of 1 to 18, and m” (corresponding to claimed a) is independently in the range of 1 to 18 (¶106). Mao does not explicitly disclose that the m is an integer of 10 to 600; the n is an integer of 10 to 600; and the o is an integer of 0 to 600.
However,. Further, Mao teaches the total of (n’+n”+n’”) is generally at least 5, preferably, at least 10, and can be 50 or more (¶99), and n (corresponding to claimed m), n’ (corresponding to claimed n), and n’’ (corresponding to claimed o) are an integer having a value of one or more (¶¶100, 101, and 102), which overlap with the claimed ranges of m, n and o, respectively.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Mao by adjusting the integer numbers of m, n, and o within the claimed ranges because they are suitable length of the block units in the transition metal complex used as redox mediator. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claim 2, Mao in view of Zabarska teaches wherein the compound of Chemical Formula 1 has a structure represented by Chemical Formula 8:
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wherein,
M is a transition metal Os (p. 12, Table 1: complex VX);
L1 and L2 are combined with each other to form a bidentate ligand Chemical Formula 5;
L3 and L4 are combined with each other to form a bidentate ligand Chemical Formula 5;
L5 and L6 are combined with each other to form a bidentate ligand Chemical Formula 5;
the R1 to R6 are each independently selected from an unsubstituted alkyl group having 1 carbon atom (compound Q: indicating the group as of Chemical Formula 5 having R1-R6 that are alkyl group having 1 carbon atom, i.e., CH3);
the X is a chloride ion (¶57: X represents counter ions; examples of suitable counter ions include chloride) having a number of 3 (¶58: d represents the number of counter ions and is typically from 1 to 5; pp. 7-12, Table 1: complex VX);
Further, Mao teaches Ω in Formula 23 (p. 16, Formula 23) is a primary amine group (¶104: Ω is the reactive group; ¶39: the reactive group may be amine, e.g., p. 13, Formula 16: –NH2), and counter ions include anions, such as chloride, and cations such as ammonium (¶57). Thus, the amine reactive group and the chloride counter ion would necessarily result in the pendant group of seg. C of Formula 8 as annotated, i.e., ammonium chloride.
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(Chemical Formula 8).
Response to Arguments
Applicant’s arguments have been fully considered but are unpersuasive.
Applicant argues it would not have been obvious to incorporate the triazole-containing spacer system of Zabarska into the osmium-containing redox polymer system of Mao (Response, p. 2, para. 3) due to their chemical difference (p. 2, para. 4), e.g., Ru of Zabarska and Os of Mao (p. 3, para. 2). These arguments are unpersuasive. Mao explicitly discloses the transition metal complex having a metal of ruthenium or osmium (¶8), and Zabarska explicitly discloses the CuAAC click approach has been already used to synthesize a polymer bearing a photoactive osmium (II) polypyridine and different fluorescent organic moieties (p. 2346, col. 1, para. 2).
Applicant argues the combination of Mao and Zabarska is not obvious (p. 3, para. 4) because the click chemistry would involve additional interactions (p. 4, para. 2), and it would not yield predictable results (p. 4, para. 4) because a triazole-containing system may not realistically and successfully be integrated into Mao’s osmium-containing redox polymer architecture (p. 5, para. 5). These arguments are unpersuasive. Based on the teachings that the transition metal complex of Mao has a metal of ruthenium or osmium (Mao, ¶8) and the CuAAC click approach has been already used to synthesize a polymer containing osmium (II) (p. 2346, col. 1, para. 2) or ruthenium (p. 2346, Fig. 27), it would have been obvious to one of ordinary skill in the art to combine Mao and Zabarska to arrive the claimed subject matter. Further, there is nothing in either Mao or Zabarska that teaches away such a combination regarding any potential interactions that would discourages using CuAAC click chemistry of Zabarska to obtain the transition metal complex containing either ruthenium or osmium of Mao.
Applicant argues that the chemistry is an unpredictable art, and asserts that generalized structural formulas don not provide a teaching or suggesting of the specific claimed architecture and the overlapping ranges do not establish obviousness between the structure and the function (p. 5, para. 3-4), or integrating the triazole-containing system into Mao’s osmium-containing redox polymer architecture (p. 5, para. 5). These arguments are unpersuasive because Applicant does not provide any evidence to support the number of carbon atoms of a spacer in the side chain would have any unexpected or surprising results on the polymer structure or function. Further, Zabarska explicitly disclose that the CuAAC click approach has been already used to synthesize a polymer containing osmium (II) (p. 2346, col. 1, para. 2). Examiner notes that since the claims under examination are product claims so that the patentability merely depends on product itself, but not the method to obtain the product, unless the method would result in different structural limitations.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLYN M SUN whose telephone number is (571)272-6788. The examiner can normally be reached M-F: 8:30am - 5:30pm.
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/C. SUN/Primary Examiner, Art Unit 1795
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