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
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 25 and 26 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 25 recites the first host compound has a structure represented by Formula 4, but it also recites various compounds H-1 to H-243. Thus, claim 25 is indefinite since scope of claim 25 is unclear since it recites a broad Formula 4 as well as the various compounds H-1 to H-243 thereof. See Ex parte Miyazaki, No. 2007-3300, 2008 WL 5105055, at 5 (BPAI Nov. 19, 2008) 89 USPQ2d 1207: [I]f a claim is amendable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35. USC 112, 2nd paragraph, as indefinite. MPEP 2175 and 2143.03.
Further, the recited various compounds H-1 to H-243 were present in the original claim 25 and thus it is confusing since the various compounds H-1 to H-243 have underlines indicating new limitations.
Claim 26 recites the second host compound has a structure represented by Formula 5, but it also recites various compounds X-1 to X-150. Thus, claim 25 is indefinite since scope of claim 25 is unclear since it recites a broad Formula 4 as well as the various compounds H-1 to H-243 thereof. See Ex parte Miyazaki, No. 2007-3300, 2008 WL 5105055, at 5 (BPAI Nov. 19, 2008) 89 USPQ2d 1207: [I]f a claim is amendable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35. USC 112, 2nd paragraph, as indefinite. MPEP 2175 and 2143.03.
Further, the recited various compounds X-1 to X-150 were present in the original claim 26 and thus it is confusing since the various compounds X-1 to X-150 have underlines indicating new limitations.
CLAIM ALLOWANCE
Amended claims and applicant’s arguments thereof are found persuasive and thus claims 1-5, 7-8, 11-24 and 27-35 are allowed.
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.
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/TAE H YOON/Primary Examiner, Art Unit 1762