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 .
DETAILED ACTION
Claims 13-28 are pending in the application. Claims 13-28 are rejected.
Response to Amendment / Argument
Objections and rejections made in the previous Office Action have been overcome by Applicant's amendments to the claims or drawings. Therefore, arguments pertaining to these objections and rejections will not be addressed.
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 27 and 28 are 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.
Claim 27 recites the limitation "the solid support made of PET" in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim. Parent claim 13 does not recite a solid support made of PET and it is unclear if claim 27 is requiring (1) the solid support be made of PET and have the recited density or (2) the solid support has the same scope as parent claim 13 but when the solid support is made of PET, it has the recited density.
Claim 28 recites the limitation "the solid support made of PS" in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim. Parent claim 13 does not recite a solid support made of PS and it is unclear if claim 28 is requiring (1) the solid support be made of PS and have the recited density or (2) the solid support has the same scope as parent claim 13 but when the solid support is made of PS, it has the recited density.
Claim Rejections - 35 USC § 112(a)
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 13-28 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. This is a new matter rejection.
Claim 13 has been amended to recite “wherein the density of the compound (I) or (II) on the surface of the solid support is between 1012 and 1018 per cm2.” The remarks filed June 17th, 2026 do not specifically point out where support can be found for this limitation. There appear to be several places where the originally filed application discloses surface densities including the following on pages 10 and 11 regarding PET supports:
PNG
media_image1.png
228
678
media_image1.png
Greyscale
PNG
media_image2.png
228
668
media_image2.png
Greyscale
The specification further discloses the following on page 11 regarding PS supports:
PNG
media_image3.png
172
680
media_image3.png
Greyscale
The originally filed applies further discloses embodiments within the above ranges including the following on page 27:
PNG
media_image4.png
160
532
media_image4.png
Greyscale
There are several aspects of the instant claims that are supported by the originally filed disclosure.
First, the instant claimed range applies to any type of solid support that may be used where the recited range (1012 to 1018 (molecules) per cm2) is only disclosed for PET. There is no disclosure to suggest that this range should be expected for any of the myriad additional types of solid supports that could be used. Furthermore, the originally filed disclosure suggests that functionalization density is not necessarily the same across solid support types since the range disclosed for PS is narrower.
Second, the instant claims define “the density of the compound (I) or (II)” where the disclosures above only refer to functional groups that are present and measured prior to introduction of the compound (I) or (II). The density of compound (I) or (II) would only appear to be identical to the underlying functional group density if each functional group reacts. The specification; however, does not state or describe that this would necessarily be the result. Even in solution it is not necessarily the case that two reactants will react completely and quantitatively and the instant application requires bulky ligands to be bound to a surface with functional groups that might be relatively close together on the surface. While it may be the case that a person having ordinary skill in the art would expect a higher density or compound (I) or (II) with a higher density of underlying functional group, the specification fails to disclose that the two densities correlate 1:1.
Since at least one of the issues of breadth above affects each claim under examination, each claim is rejected as containing new matter.
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 MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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, Renee Claytor can be reached at 571-272-8394. 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.
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
Prosecution Insights