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
This office action is a response to Applicant’s amendments/remarks after non-final rejection filed 6/24/2026.
As filed, claims 1, 2, 5, 7, 10-12, 14, and 15 are pending; claims 16, 17, 20, and 21 are withdrawn; and claims 3, 4, 6, 8, 9, 13, 18, 19, and 22-26 are cancelled.
Response to Amendments/Remarks
Applicant’s amendments/remarks, filed 6/24/2026, with respect to claims 1, 2, 5, 7, and 10-15, have been fully considered and are entered. The status for each rejection in the previous Office Action is set out below.
The § 112(b) indefinite rejection of claims 1, 5, 7, 10, and 13-15 is withdrawn per amendments and cancellation of claim 13.
The claim objection of claim 11 is withdrawn per amendments
The claim objection of claim 13 is withdrawn per cancellation of the claim.
The claim objection of claims 2 and 12 is withdrawn per amendments.
Election/Restrictions
Claims 1, 2, 5, 7, 10-12, 14, and 15 are directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), claims 16, 17, 20, and 21, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 4/3/2025 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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 16, 17, and 21 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 16, the claim is dependent of claim 1, and the claim recites the limitation of “p is 0, 1, 2, 3, 4, or 5”. In claim 1, p cannot be 0. Having p = 0 in claim 16 introduces ambiguity into the metes and bounds of this claim, which rendered this claim indefinite.
Regarding claim 17, the claim is dependent of claim 16, and it failed to correct the indefiniteness issue of claim 16, which rendered the claim indefinite.
Regarding claim 21, the claim recites the phrase, “The method of claim 21”. Claim 21 cannot be dependent of itself. By doing so, it creates ambiguity into the metes and bounds of this claim, which rendered the claim indefinite.
Claim Objections
Claims 16 and 21 are objected to because of the following informalities:
Regarding claim 16, the claim recites multiple instances of “OSiR3” for instant variable R9. Accordingly, the duplicate needs to be removed.
Regarding claim 16, the claim recites the phrase, “C1-12 alkylalkyl”, for instant variable R9, which contains typographical error, and it needs to be corrected.
Regarding claim 21, the claim recites the phrase, “the contacting is in the presence of a base”.
Such expression can be clarified by reciting -- the contacting is in --.
Appropriate correction is required.
Allowable Subject Matter
Claims 1, 2, 5, 7, 10-12, 14, 15, and 20 are allowed.
Conclusion
Claims 16, 17, and 21 are rejected.
Claims 1, 2, 5, 7, 10-12, 14, 15, and 20 are allowed.
Claims 16 and 21 are objected.
Claims 3, 4, 6, 8, 9, 13, 18, 19, and 22-26 are cancelled.
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.
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.
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, 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.
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.
/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
Prosecution Insights