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 1, 2, 6-11, 13-15, 22-24 and 26 are pending in the instant application.
Continued Examination Under 37 CFR 1.114
A request for continued examination under
37 CFR 1.114, including the fee set forth in
37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 8, 2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group II,
PNG
media_image2.png
246
544
media_image2.png
Greyscale
,
and the species of Compound No. 13 [Pd(IPr#)(cin)Cl], disclosed on page 33 of the instant specification (reproduced below),
PNG
media_image3.png
46
260
media_image3.png
Greyscale
PNG
media_image4.png
194
366
media_image4.png
Greyscale
,
in the reply filed on June 5, 2025 was acknowledged in a previous Office Action. The requirement was deemed proper and therefore made FINAL in a previous Office Action. The entire scope of compounds embraced by independent claim 15 has been searched and examined. Claims 15 and 22 are directed to the invention of elected Group II.
Claims 1, 2, 6-11, 13, 14, 17, 23, 24 and 26 are withdrawn from further consideration pursuant to
37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 5, 2025. Claim 17 was cancelled per the Amendment filed December 8, 2025.
It is suggested that in order to advance prosecution, the non-elected subject matter in which rejoinder is not applicable (i.e., Claims 1, 2, 6-11, 13, 14, 23, 24 and 26) be canceled if Applicant files a response to this Office Action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 8, 2026 was filed after the mailing date of the final Office Action on February 9, 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Rejections made in the previous Office Action that do not appear below have been overcome by Applicant’s amendments to the claims. Therefore, arguments pertaining to these rejections will not be addressed.
As a result of the current amendments to dependent claim 22 per the Amendment filed April 8, 2026, the following objection and rejection now applies.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
Applicant has amended claim 22 by adding four (4) different formulae to claim 22,
PNG
media_image5.png
134
232
media_image5.png
Greyscale
,
PNG
media_image6.png
190
230
media_image6.png
Greyscale
,
PNG
media_image7.png
134
226
media_image7.png
Greyscale
,
PNG
media_image8.png
186
232
media_image8.png
Greyscale
but these four new formulae are not disclosed in the instant specification.
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.
Claim 22 is 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. No support is found in the originally filed specification, the originally filed claims or the originally filed drawings for the current amendments to dependent claim 22. Applicant has amended claim 22 by adding four (4) new different formulae to claim 22,
PNG
media_image5.png
134
232
media_image5.png
Greyscale
,
PNG
media_image6.png
190
230
media_image6.png
Greyscale
,
PNG
media_image7.png
134
226
media_image7.png
Greyscale
,
PNG
media_image8.png
186
232
media_image8.png
Greyscale
but these four formulae are not disclosed in the instant specification.
Applicant states that support is found for these added formulae on pages 31-33 of the specification and in Figure 3. Applicant states that Compound 5 in Scheme 1 on pages 31-32 of the instant specification teaches a IPr# salt (reproduced in-part below),
PNG
media_image9.png
44
418
media_image9.png
Greyscale
PNG
media_image10.png
286
534
media_image10.png
Greyscale
.
Applicant also states that Scheme 2 on page 33 of the instant specification (reproduced in-part below) and Figure 3 teach Compound No. 13, which refers to [Pd(IPr#)(cin)Cl],
PNG
media_image11.png
464
628
media_image11.png
Greyscale
.
Applicant is relying on the disclosures on pages 31-33 of the specification and in Figure 3, and specifically a single species of Compound No. 13, for support for the four (4) different new formulae added to claim 22. Applicant’s showing is not persuasive. None of the four new formulae added to claim 22 were disclosed in the originally filed specification, the originally filed claims or the originally filed drawings. Further, a single species is seldom, if ever, sufficient to support a generic claim. In re Shokal, 113 U.S.P.Q. 283, 285 (C.C.P.A. 1957). In re Shokal also states “Genus containing thousands of species cannot properly be identified by mere recitation or reduction to practice of four or five of them”. Therefore, currently amended claim 22 lacks written description as such.
Reminder to Applicant
As a reminder, Applicant should specifically point out the support in the original disclosure {i.e., page number(s) and line number(s)} for any new claims or amended claims and for any amendments made to the disclosure. Making generic statements such as “all amendments are fully supported in the originally filed disclosure or the originally filed claims” without specifying page numbers and originally filed claim numbers are insufficient. See MPEP §714.02 and MPEP §2163.06(I).
Allowable Subject Matter
The elected species of Compound No. 13 [Pd(IPr#)(cin)Cl], disclosed on page 33 of the instant specification, is allowable over the prior art of record.
Claim 15 is allowed.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Laura L. Stockton
(571) 272-0710.
The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time.
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 acting supervisor,
James Alstrum-Acevedo can be reached on 571/272-0699. 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.
/LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620
Technology Center 1600
April 14, 2026
Book XXVIII, page 203
Prosecution Insights