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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/18/2026 has been entered.
As filed, claims 1, 2, 5, 7, and 10-15 are pending; claims 16, 17, 20, 21, 25, and 26 are withdrawn; and claims 3, 4, 6, 8, 9, 18, 19, and 22-24 are cancelled.
Response to Amendments/Remarks
Applicant’s amendments/remarks, filed 2/18/2026, with respect to claims 1, 2, 5, and 7-15, have been fully considered and are entered. The status for each rejection in the previous Office Action is set out below.
The § 102(a)(1) rejection of claims 1, 2, 5, 7, 8, and 10-15 by Rubio-Perez is withdrawn per amendments and cancellation of claim 8.
The § 102(a)(1) rejection of claims 1, 2, 5, 7-9, 11, 12, 14, and 15 by Hanley is withdrawn per amendments and cancellation of claims 8 and 9.
The claim objection of claims 1, 11, and 12 is withdrawn per amendments.
Claim Rejections - 35 USC § 112(b)
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 1, 5, 7, 10, and 13-15 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.
Regarding claim 1, the claim recites the phrase, “wherein the optional substitution comprises at least one group. . .”, wherein the transitional phrase, “comprises”, is an open-ended language and therefore include additional subject matter that is not described in the instant specification and is not particularly pointed out or distinctly claimed. The identity of the additional atoms or groups is unknown and how to determine the identity of the additional atoms or groups is not pointed out or distinctly claimed.
The term, “compound”, contradicts the open language "comprises." A "compound" is defined as a substance whose molecules consist of unlike elements and whose constituents cannot be separated by physical means (see Grant & Hackh's Chemical Dictionary (5th Ed. 1987) at page 148). By contrast, a composition is defined as elements or compounds forming a material or produced from it by analysis. Id. In other words, a compound is a molecule with more than one element, and a composition is a mixture of two or more compounds or molecules.
The transitional term "comprising" is synonymous with "including", "containing", and "characterized by". "Comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves “the claim open for the inclusion of unspecified ingredients even in major amounts”).
Thus, a “compound" is singular and requires a definite chemical formula, and the open-ended term "comprises" does not exclude unrecited elements. Furthermore, “comprising”, used in conjunction with “compound” fails to articular exactly what subject matter is excluded from the claim scope of compounds, thereby rendering the scope of claim 1 indefinite.
Regarding claims 5, 7, 10, and 13-15, these claims are directly or indirectly dependent of claim 1, and they failed to correct the indefiniteness issue of claim 1, which rendered these claims indefinite.
Claim Objections
Claim 11 is objected to because of the following informalities:
Regarding claim 11, the claim recites the phrase, “CH(2-Np)2”, which contains abbreviation, and the abbreviation needs to be spelled out in their entirety because this is the first time that 2-Np appears in the claim, and they must be defined.
Appropriate correction is required.
Claim 13 objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Both claims are drawn to n=2.
Allowable Subject Matter
Claims 2 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Compact Prosecution
The Examiner finds that withdrawn claims 25 and 26 would not be eligible for rejoinder once claims 1, 2, 5, 7, and 10-15 are found to be allowable. See MPEP 821.04. Accordingly, the Examiner would suggest that the Applicant cancel claims 25 and 26.
Conclusion
Claims 1, 5, 7, 10, and 13-15 are rejected.
Claims 2 and 11-13 are objected.
Claims 16, 17, 20, 21, 25, and 26 are withdrawn.
Claims 3, 4, 6, 8, 9, 18, 19, and 22-24 are cancelled.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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