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 .
Amendment to the claims was submitted with corrections on 12/05/2025, the 112(d) rejection is withdrawn.
Claim Status
Claims 1-2, 5, 9-12, 21-23, 26-30, and 35-39 are under consideration.
Claims 3-4, 6-8, 13-20, 24-25, and 31-34 are canceled.
Claim Objections
Claims 1-3, 10-13, 15-16, 21, 27, 29-37 are objected to because of the following informalities:
Each instance of “carboxylic ligand” should be “carboxylate ligand”.
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.
Claims 1-2, 5, 9-12, 21-23, 26-30, and 35-39 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 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.
Regarding claims 1-2, 5, 9-12, 21-23, 26-30, and 35-39,
The independent claims 1, 21, and 27 have been amended to disclose the first substituent of the first carboxylic acid is directly bonded to a first tin atom of the plurality of tin clusters.
However, since the instant first substituent is a substituent of a first carboxylic acid, the substituent would necessarily be indirectly bonded through the carboxylate moiety, as disclosed by the instant specification at [0039-0040, figures 3A and 3B], where a substituent of a carboxylic acid is represented by R1 or R2 in figure 3A, or as R2 in figure 3B. As seen in figures 3A and 3B, the substituent of a carboxylic acid is indirectly bonded to a tin atom through a carbon and oxygen atom. There is no support in the specification for direct bonding a substituent of a carboxylic acid to a tin atom.
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Response to Arguments
Applicant's arguments regarding the claim amendments filed 12/05/2025 regarding the 112(a) rejections have been fully considered but they are not persuasive.
Applicant asserts that the instant specification discloses the limitation of a first substituent of a first carboxylate ligand directly bonded to a first tin atom, referring to R1 of figure 3B and paragraph [0040].
However, as previously indicated in the office action filed 08/28/2025, each substituent of a carboxylic acid, such as R1 and R2 of figure 3A and R2 in figure 3B, is necessarily indirectly bonded to a tin atom through a carboxylate group. Paragraph [0040] which discloses the R1 group is a substituent of a carboxylic acid refers only to figure 3A, not figure 3B.
The Applicant asserts that the examiner agreed during the interview on 11/06/2025 to call the applicant’s representative to resolve any remaining issues if the application is not in condition for allowance. However, no such agreement was made during the interview, as noted in the examiner interview summary filed 11/10/2025.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Lee whose telephone number is (571)272-2261. The examiner can normally be reached M-Th 7:30-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.N.L./Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734