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 .
Election/Restrictions
In a requirement for election of species dated 05/15/2025, Applicant was required to choose from
Species I: M is iridium (claims 1-12 and 17-20)
Species II: M is platinum or palladium (claims 1-10 and 13-20), and
Species III: M is Os, Cu, Ag, or Au (claims 1-10 and 17-20).
Applicant elected Species I without traverse in a reply filed on 07/15/2025.
Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Species I, drawn to claims 1-12 and 17-20, is examined herein.
Response to Amendment
In the response filed 12/17/2025, the claims and specification were amended.
These amendments are hereby entered.
In light of Applicant’s amendments to the specification, the objection to the specification is withdrawn by the Office.
In light of Applicant’s amendments to the claims, the rejection under 35 U.S.C. 112(b) of claims 8 and 11 as failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention, the rejection under 35 U.S.C. 102 of claims 1-7, 9-10, and 17-18 as being anticipated by Oshiyama et al. (US 2007/0196687 A1), and the rejection under 35 U.S.C. 103 of claims 1-7, 9-10, and 17-20 as being unpatentable over Kim et al. (KR 2015/0041506 A) in view of Su et al. (US 2018/0097185 A1) are withdrawn by the Office.
Applicant’s amendments to the claims has caused withdrawal of the indication of claim 12 as being dependent on a rejected claim, but otherwise allowable.
Claims 1, 8, 11, 17, and 19-20 have been amended.
Claims 1-20 are pending in the application,
of which claims 13-16 are withdrawn from consideration.
Response to Arguments
Applicant’s arguments 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.
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 1-12 and 17-20 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.
With respect to independent claims 1, 17, and 20, Applicant has amended the claims to exclude two specific compounds found in Oshiyama et al. (US 2007/0196687 A1) (cited in the previous Office Action dated 09/18/2025). To facilitate discussion, the negative limitation in question is pictured below.
PNG
media_image1.png
296
704
media_image1.png
Greyscale
At no place in the instant disclosure are the newly excluded, specific compounds pictured or even suggested as a preferred combination of elements.
Section 2173.05(i) of the MPEP teaches us that any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, then they may be explicitly excluded in the claims. However, in order to negatively exclude a compound, Applicant must reasonably convey to those skilled in the art that the inventor had possession of the claimed compound as of the effective filing date of the claimed invention.
The instant disclosure does not comprise any suggestion that Applicant was in possession of the claimed compounds, nor does it comprise any positive recitation of selections that could be used by a person of ordinary skill to arrive at the negatively excluded compounds. As there is no basis for the positive recitation for these compounds, the compounds cannot be negatively excluded from the claims, and doing so represents new matter.
The closest limitation which Applicant appears to have positive support for is pictured below (paragraph 0075 of the instant specification).
PNG
media_image2.png
290
182
media_image2.png
Greyscale
While Applicant could exclude compounds of the above formula with support from paragraph [0075] of the instant specification, Applicant cannot specifically exclude the two compounds present in the amended independent claims.
Claims 2-12 and 18-19 are rejected by virtue of dependency.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Szigethy et al. (US 2015/0249223 A1) – teaches relevant compounds when two R1 are joined (abstract).
Applicant's amendment necessitated the any 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 RACHEL SIMBANA whose telephone number is (571)272-2657. The examiner can normally be reached Monday - Friday, 8:00 A.M. - 4:30 P.M..
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, 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.
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.
/RACHEL SIMBANA/Examiner, Art Unit 1786