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 1-10 and 46-54 are pending in the instant application.
Election/Restrictions
Applicant’s election of Group I,
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and the species of Example 1, found on pages 16-17 of the instant specification,
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in the reply filed on September 16, 2025 was acknowledged in the previous Office Action. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
It is noted that the counterion, which represents variable X- in independent claim 1, is not shown in the elected species of Example 1.
Applicant’s claimed transition metal complex genus of instant Formula I has a number of variables and their permutations and combinations result in a vast number of transition metal complexes that are generically claimed. Therefore, the elected transition metal complexes of Group I has been examined according to MPEP §803.02.
Since no prior art was found on the elected species, the search and examination was expanded within elected Group I until prior art was found, in which case, the examination stopped and prior art has been applied against the claims. Note, MPEP §803.02.
CORRECTION: The subject matter of the expanded search identified in the previous Office Action, inclusive of the elected species of Example 1, is as follows:
a transition metal complex of instant Formula I,
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wherein
M represents the transition metal Iridium (Ir);
L represents a linking moiety selected from an
amide (including a reverse amide) and an ester
(including a reverse ester);
R2 represents an amine, a protected amine, aryl
cycloalkyl, cycloalkenyl, cycloalkynyl,
heterocyclyl, hydroxy, carboxy, halo, alkoxy,
maleimide, -C(O)H, -C(O)OR8 or haloalkyl; and
all other variables are as defined in independent claim 1.
The requirement was deemed proper and therefore made FINAL in the previous Office Action.
As a result of the current amendments to the claims per the Amendment filed January 14, 2026, the search and examination has been further expanded beyond that which is indicated above and is as follows:
a transition metal complex of instant Formula I,
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wherein
M represents a transition metal from the Platinum
group metals (i.e., Platinum, Iridium, Osmium,
Palladium, Rhodium and Ruthenium);
L represents a linking moiety selected from an
amide (including a reverse amide) and
an ester (including a reverse ester);
R2 represents an amine, a protected amine, aryl
cycloalkyl, cycloalkenyl, cycloalkynyl,
heterocyclyl, hydroxy, carboxy, halo, alkoxy,
maleimide, -C(O)H, -C(O)OR8 or haloalkyl; and
all other variables are as defined in independent claim 1.
Claims readable on the expanded search and examination are claims 1-4, 9, 10 and 46-54.
Subject matter not embraced by the above identified expanded search and examination and Claims 5-8 and 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 16, 2025. Claims 11-16 have been cancelled per the Amendment filed January 14, 2026.
Information Disclosure Statement
The two information disclosure statements (IDSs) submitted on October 10, 2025 crossed in the mail with the mailing date of the non-final Office Action on October 14, 2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Interpretation
The claims have been interpretated as follows.
Firstly, an “amide” and “ester” as found in the claims includes a reverse amide and a reverse ester.
Secondly, substituents such as “alkyl”, “heterocyclyl”, etc. can be unsubstituted or substituted as defined in the instant specification on pages 6-7.
Rejections and objections made in the previous Office Action that do not appear below have been overcome by either Applicant’s arguments or by Applicant’s amendments to the claims. Therefore, arguments pertaining to these rejections and objections will not be addressed.
Claim Objections
Claim 54 is objected to because of the following informalities: “toc” should be changed to “of”.
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.
Claims 1-4, 9, 10 and 46-54 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 1 is indefinite because there are two different definitions for the R8 and R9 variables. See lines 9-10 of the claim and lines 4-5 of page 3. Correction is required.
Claims dependent on claim 1 which do not resolve the problem in claim 1 are also found indefinite.
Newly added claim 54 lacks antecedent basis from independent claim 1 because there is no X- variable counterion found in the species claimed in claim 54 but is required in independent claim 1. Further, claim 54 should be directed to a complete compound, not a charged species. Therefore, claim 54 is indefinite.
Response to Arguments
Applicant’s arguments filed January 14, 2026 have been fully considered. In regards to the two definitions of variables R8 and R9 in independent claim 1, Applicant argues that the first definition of R8 and R9 in claim 1 is associated with the definition of variables R3-R7 while the second definition of R8 and R9 is solely limited to the selection of the R2 variable. Applicant then argues that it is clear to the skilled artisan that the definition of R8 and R9 is dependent on whether the skilled artisan is defining R2 or defining R3-R7.
In response, there should be only one definition in the claims for each variable found in the claim so that the claims are clear and satisfy the requirement of definiteness under 35 USC 112(b). Having two separate definitions for variables R8 and R9 fails to meet the definiteness requirement. The rejection of the claims under 35 USC 112(b) is deemed proper and is therefore, maintained.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 54 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 54 fails to further limit claim 1 because claim 54 is broader in scope than claim 1 due to the lack of a X- counterion in the species claimed in claim 54.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4, 9, 10, 46-48 and 50-52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
Herrmann et al. {US Patent 5,981,286} – who disclose, for instance, the metal complex in Figure 1c,
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{a transition metal complex of instant Formula I,
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wherein
M = Ruthenium;
A = N;
D = N;
E = N;
G = N;
Y = N;
Z = N;
R3 = alkyl (which alkyl can be substituted per the instant specification on
page 6) or heteroalkyl;
R4 = alkyl (which alkyl can be substituted per the instant specification on
page 6) or heteroalkyl;
R5 = alkyl (which alkyl can be substituted per the instant specification on
page 6) or heteroalkyl;
R6 = alkyl (which alkyl can be substituted per the instant specification on
page 6) or heteroalkyl;
R7 = alkyl;
R1 = alkylene;
L = ester;
R2 = heterocyclyl (which heterocyclyl can be substituted per the instant
specification on page 7);
X- = counterion hexafluorophosphate (-PF6); and
n = zero};
Sigal et al. {WO 03/002974 A2} – who disclose Complex 3 in Example 3 on page 22,
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{a transition metal complex of instant Formula I,
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wherein
M = Ruthenium;
A = N;
D = N;
E = N;
G = N;
Y = N;
Z = N;
R3 = alkyl (which alkyl can be substituted per the instant specification on
page 6);
R4 = alkyl (which alkyl can be substituted per the instant specification on
page 6);
R5 = alkyl (which alkyl can be substituted per the instant specification on
page 6);
R6 = alkyl (which alkyl can be substituted per the instant specification on
page 6);
R7 = alkyl;
R1 = alkylene;
L = ester;
R2 = heterocyclyl (which heterocyclyl can be substituted per the instant
specification on page 7);
X- = counterion sodium; and
n = zero};
DeLaive et al. {Journal of the American Chemical Society (1977), 99(21), pages 7094-7097} – who disclose, for instance, Compound 4
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{a transition metal complex of instant Formula I,
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wherein
M = Ruthenium;
A = N;
D = N;
E = N;
G = N;
Y = N;
Z = N;
R3 = -C(O)OR8 and R8 = alkyl (which alkyl can be substituted per the
instant specification on page 6);
R4 = -C(O)OR8 and R8 = alkyl (which alkyl can be substituted per the
instant specification on page 6);
R5 = -C(O)OR8 and R8 = alkyl (which alkyl can be substituted per the
instant specification on page 6);
R6 = -C(O)OR8 and R8 = alkyl (which alkyl can be substituted per the
instant specification on page 6);
R7 = -C(O)OR8 and R8 = alkyl (which alkyl can be substituted per the
instant specification on page 6);
R1 = a direct bond;
L = ester;
R2 = aryl;
X- = counterion hexafluorophosphate (-PF6); and
n = one};
Breault et al. {Journal of the American Chemical Society (1998), 120(14), pages 3402-3410} – who disclose, for instance, Ru(II)6.12(PF6)2 on page 3405,
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{a transition metal complex of instant Formula I,
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wherein
M = Ruthenium;
A = N;
D = N;
E = N;
G = N;
Y = N;
Z = N;
R3 = alkyl;
R4 = alkyl;
R5 = alkyl;
R6 = alkyl;
R7 = alkyl (which alkyl can be substituted per the instant specification on
page 6);
R1 = alkylene;
L = ester;
R2 = aryl;
X- = counterion hexafluorophosphate (-PF6); and
n = zero};
the compound of Chemical Abstracts Registry Number 106530-11-4 {indexed in the Registry file on STN CAS ONLINE February 7, 1987},
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{a transition metal complex of instant Formula I,
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wherein
M = Ruthenium;
A = N;
D = N;
E = N;
G = N;
Y = N;
Z = N;
R3 = -C(O)OR8 and R8 = alkyl (which alkyl can be substituted per the
instant specification on page 6);
R4 = -C(O)OR8 and R8 = alkyl (which alkyl can be substituted per the
instant specification on page 6);
R5 = -C(O)OR8 and R8 = alkyl (which alkyl can be substituted per the
instant specification on page 6);
R6 = -C(O)OR8 and R8 = alkyl (which alkyl can be substituted per the
instant specification on page 6);
R7 = -C(O)OR8 and R8 = alkyl (which alkyl can be substituted per the
instant specification on page 6);
R1 = a direct bond;
L = ester;
R2 = hydroxy;
X- = counterion chloride; and
n = three};
and
the compound of Chemical Abstracts Registry Number 2249816-14-4 {indexed in the Registry file on STN CAS ONLINE November 20, 2018},
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{a transition metal complex of instant Formula I,
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wherein
M = Ruthenium;
A = N;
D = N;
E = N;
G = N;
Y = N;
Z = N;
R3 = haloalkyl;
R4 = haloalkyl;
R5 = haloalkyl;
R6 = haloalkyl;
R7 = an amide;
R1 = a direct bond;
L = amide;
R2 = a protected amine;
X- = counterion hexafluorophosphate (-PF6); and
n = two}.
Each of the above cited prior art disclose at least one transition metal complex that anticipates the instant currently amended claimed invention as shown above. In regards to claims 4, 9, 10, 50 and 51, the claims are directed to properties of the claimed transition metal complexes such as its absorption spectrum, cell permeability and solubility in a specific solvent. However, a compound and its properties are inseparable. In re Papesch, 137 USPQ 43 (CCPA 1963). See MPEP §2112.01(I) and (II). Therefore, each of the above cited prior art anticipates the instant claimed invention.
Note to Applicant: Not every piece of prior art found in the database search or class/subclass search which would anticipate and/or render obvious the instant claimed invention under examination has been applied against the instant currently pending claims under examination. See MPEP §904.03.
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).
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 571/272-5548. 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
March 26, 2026
Book XXVIII, page 257
Prosecution Insights