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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 11, 2025 has been entered.
Election/Restrictions
Applicant’s election 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 As a result, claims 1-2 (Formula 1, 5, 8) are under examination, and claims 3-12 and other Species in claims 1-2 are withdrawn from consideration.
Status of Objections and Rejections
All rejections from the previous office action are withdrawn in view of Applicant’s amendment.
New grounds of rejection are presented by the amendments.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation “the m is an integer of 15 to 300; the n is an integer of 15 to 300; and the o is an integer of 0 to 15” in last three lines, which is not disclosed in the specification and is deemed to be new matter. The specification merely discloses 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 (PGpub ¶¶29-31), and the m is an integer of 15 to 550; the n is an integer of 15 to 550; and the o is an integer of 0 to 300 (PGpub ¶¶40-42).
Subsequent dependent claim 2 is rejected due to its dependency on claim 1.
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 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 claim 1, 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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288
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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290
444
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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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410
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 does not explicitly disclose the a is an integer of 2 to 10; the b is an integer of 2 to 10, the c is an integer of 2 to 10; the m is an integer of 15 to 300; the n is an integer of 2 to 10; and the o is an integer of 0 to 150.
However, Mao teaches 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), which overlap with the claimed ranges of c, b and a, respectively. 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 a, b, c, 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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295
408
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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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408
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(Chemical Formula 8).
Response to Arguments
Applicant’s arguments have been fully considered but are unpersuasive.
Applicant argues Mao’s osmium complex is a pendant group (p. 9, last line), while the recited Chemical Formula 1 having the metal complex, the triazole/thioether linker, and the ligand sets forming part of the backbone repeat unit itself (p. 10, last para.). This argument is unpersuasive and the corresponding parts between the Mao’s Formula 23 and the recited Chemical Formula 1 are annotated in the instant rejection. For both, the osmium complex is a pendant group grafted to the polymeric carbon backbone via the spacer (e.g., “L” in Formula 19 or “G” in Formula 23).
Applicant argues Mao neither discloses nor suggests the particular ligands of Formula 5-7 but an over-generalization without structural specificity (p. 11, para. 3). This argument is unpersuasive because Mao teaches the general formula of the osmium complex, with examples of the specific structures, which anticipated the polymers recited in the claims which are also represented by a general structural formula.
Applicant argues the integers control spacer length and pendant-group density, not the size of a backbone metallopolymer repeat unit (p. 12, para. 3). This argument is unpersuasive because the integers n, n’, and n” (Mao, Formula 23) are numbers of the repeat units of the backbone, corresponding to n, m, and o of the recited Chemical Formula 1. The integers m’ and m” (Mao, Formula 23) are numbers of the repeat units of the pedant group of seg. B, corresponding to b and a in the recited Chemical Formula 1. The integer m (Mao, Formula 23) is the number of the repeat units of the pedant group of seg. C, corresponding to c in the recited Chemical Formula 1.
Applicant’s argument that triazine is a six-membered aromatic ring while triazole is a five-membered ring (p. 13, para. 2) is moot because Zabarska is now relied on to teach the triazole unit as the spacer connecting the osmium complex to the backbone chain.
Applicant’s argument that Mao’s synthesis method is different from that in the present invention, i.e., orthogonal click reaction (p. 14, para. 2) is unpersuasive because the synthesis method, if claimed (Examiner notes that no such limitation is recited), is a “product-by-process” limitation and determination of patentability is only 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). MPEP 2113(I).
Conclusion
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/C. SUN/Primary Examiner, Art Unit 1795