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 .
Applicants' arguments, filed 03/18/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Interpretation
Applicants have not defined “metal complex” which is also known as a coordination entity/coordination complex. Thus, the IUPAC definition of a metal complex/coordination entity (also called a coordination complex) is: an assembly consisting of a central atom (usually metallic) to which is attached a surrounding array of other groups of atoms (ligands). E.g. it is a single compound at a time, e.g. it is one of any of the metal chelates which can be produced by applicant’s reaction and pure/isolated as a single compound, not a composition comprising multiple different metal chelates resulting from the reaction and any leftover reactants/byproducts of the reaction which forms a composition not a metal complex (IUPAC: https://goldbook.iupac.org/terms/view/C01330). Thus, applicant’s claims are to a metal complex, e.g. a single compound, that can be formed from the claimed mechanochemistry reaction but as the claim is to the metal complex itself, e.g. a single metal complex compound which is one of the products/only product of applicant’s reaction, because determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Thus, as long as the examiner finds a complex which would be the product of the claimed reaction, it reads on and/or will anticipate the claimed metal complex as currently claimed.
Applicant’s product by process limitations are not required to yield the same metal chelates which are instantly claimed and as such basing the weight of the additive on reactants (a) and (b) of which for instance the alkoxide ligands on the metal are not actually required to be present in the final claimed product, does not actually limit the amount of additive in the final metal chelate as claimed in any way. Thus, because the metal chelate product as claimed is any one of the metal chelates which can be made via applicants mechanochemistry step and isolated/purified as nothing in applicant’s product-by-process limitations excludes purification means of isolating the claimed metal complexes because the claims use comprising language which is open-ended and excludes nothing and includes any amount of any of the claimed additives in the claimed metal chelate compound.
Claim Objections
Claim 3 objected to because of the following informalities: the claim contains multiple bullet points. Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps.
Claim 3 contains numerous words throughout the claim that are capitalized that should not be.
Appropriate correction is required.
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.
Claim 3 is 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 3 recites “animals or humans” in the second from last line of the claim. It is unclear what is meant by the limitation and therefore the claim is indefinite.
Claim Rejections - 35 USC § 102
Claim(s) 1-7, 13 and 18 stand rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gruenbaum (US Patent Pub. 2010/0151367, disclosed by applicant). This rejection is maintained.
Gruenbaum discloses a method of forming a metal complex comprising mixing 0.390 mol of titanium butoxide, 0.102 mol of phthalonitrile and at least one additive; wherein the mixture is milled (Examples 1 and 3). The concentrations meets the claimed molar ratio of metal alkoxide to macrocycle. Gruenbaum discloses the metal complex as photoconductors ([0003]). The metal complex anticipates the instant claims.
Applicant’s Arguments
Applicant argues Gruenbaum does not disclose the mechanochemistry of the instant claims. Applicant argues the process of Gruenbaum uses solvents. Applicant argues a reference that must be modified to disclose claimed combination does not anticipate. Applicant argues Gruenbaum only meet the claimed molar ratio wherein the metal alkoxide to macrocycles is 1/4 to 1, a nothing more. Applicant's arguments have been fully considered but they are not persuasive.
Examiner’s Response
Applicant’s claims are to the complex itself not a composition comprising the complex or any additive present which is part of the complex. The claims read on a metal complex, therefore the complex of Gruenbaum anticipates the claims. Once the metal complex is found, which is taught by Gruenbaum, whether or the reaction actually uses solvents, the burden is on applicant to provide evidence that the claimed metal complex is structurally and/or materially different from that of the prior art. See MPEP 2113. Applicants repeatedly argue that their complexes are different because they are just pulverized/ground together (A0 and (b) using mechanochemistry. The examiner again respectfully points out that the mechanochemistry reaction mixture which results is not a complex by definition, it is a reaction mixture/composition which contains the displaced alkoxide ligands, etc., which would not be part of the metal complex as per the definition of a metal complex. Furthermore, this mixture will contain complexes where all alkoxide ligand are displaced and some complexes with incomplete formation with the phthalonitrile. The metal complex of Gruenbaum meets the limitation of the instant claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 NANNETTE HOLLOMAN whose telephone number is (571)270-5231. The examiner can normally be reached Monday-Friday 9am-6pm.
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, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NANNETTE HOLLOMAN/Primary Examiner, Art Unit 1612
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