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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Amendment
The amendment of 19 February 2026 has been entered.
Disposition of claims:
Claims 1, 11-13, and 17-20 have been amended.
Claims 1-20 are pending.
The amendments to claims 11, 12, 18, and 19 have overcome the objections to these claims set forth in the last Office action. The objections have been withdrawn.
The amendment to claim 19 has overcome the rejections of claim 19 under 35 U.S.C. 112(b) as well as under 35 U.S.C. 112(d) set forth in the last Office action. The rejections have been withdrawn.
The amendment to claim 1 has overcome the rejection of claims 1-5 under 35 U.S.C. 102(a)(1) as being anticipated by Peters et al. (“Mono- and Diprotonation of the Superbasic Bisguanidine 1,2-Bis(N,N,N’,N’-tetramethylguanidino)benzene (btmgb) and Pt II and Pt IV Complexes of Chelating Bisguanidines and Guanidinates” Chemistry—A European Journal, vol. 14 (2008) pp. 7723-8039) (hereafter “Peters”) set forth in the last Office action. The rejection has been withdrawn.
Response to Arguments
Applicant’s arguments with respect to the rejection of claims 1-5 under 35 U.S.C. 102(a)(1) as being anticipated by Peters et al. (“Mono- and Diprotonation of the Superbasic Bisguanidine 1,2-Bis(N,N,N’,N’-tetramethylguanidino)benzene (btmgb) and Pt II and Pt IV Complexes of Chelating Bisguanidines and Guanidinates” Chemistry—A European Journal, vol. 14 (2008) pp. 7723-8039) (hereafter “Peters”) set forth in the last Office action have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Election/Restrictions
Applicant’s election without traverse of Species IV (the instant Z is C) and Ir for the instant M in the reply filed on 11 August 2025 has been acknowledged.
Claims 13-15 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11 August 2025.
However, a complete search of the elected species did not result in any prior art the reads on the claims. Therefore, the search was expanded to other examinable species. The examinable species is the species of Species IV (the instant Z is C) and Pt for the instant metal M.
The examinable species reads on claims 1-11 and 13-20.
With regard to the instant claims 1-11 and 13-20 only, a search of the prior art did not show the elected species. None of the claims are specifically drawn to the elected species in combination with the limitations of one of claims 1-11 and 13-20 in independent form. Additionally, as outlined below the claims are rejected under 35 U.S.C. 112(a). Thus, none of these claims have been indicated as allowable.
It is noted that claims 1-11 and 13-20 have not been searched with respect to species beyond the initially elected species and the current examinable species. In other words, potential new examinable species could found once the search is expanded beyond the current examinable species.
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 1-11 and 13-20 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, 17, and 20: Claims 1, 17, and 20 recite the limitation that the compound comprising the structure of the instant Formula I is not the compound shown below.
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However, this specific compound is not exemplified by the instant specification. Neither is the nitrogen containing ligands of the compound shown above exemplified by the instant specification. Therefore, it does not appear that Applicant was in possession of the claimed invention where the specific compound shown above is excluded.
Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). See MPEP 2173.05(i).
Regarding claims 2-16 and 18-19: Claims 2-16 and 18-19 are rejected due to their dependency from one of claims 1 or 17.
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 DYLAN CLAY KERSHNER whose telephone number is (303)297-4257. The examiner can normally be reached M-F, 9am-5pm (Mountain).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DYLAN C KERSHNER/Primary Examiner, Art Unit 1786