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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
Status of Claims
Claims 1-8 and 11-17 are currently under examination. Claims 9-10 and 18-20 are withdrawn from consideration. Claims 1 and 12 are amended.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 102(a)(1) as being anticipated by Che et al. (J. Chem. Soc., Dalton Trans., 1990, 3215, applicants submitted in IDS) with respect to claims 1-8, 11 and 13-17 is withdrawn.
Based on the Examiner's indication of allowable subject matter in claim 10, Applicant has amended claim 12 in independent form thereby obviating Che et al.
However a modified survey of the prior art produced a new reference deemed to represent an obstacle to the patentability of at least one compound recited in claim 12. See detail discussion below.
It is sincerely regretted that Applicant had not been afforded the opportunity to confront this reference previously.
New grounds of rejections are set forth below.
New Grounds of Rejections
Claim Rejections - 35 USC § 102
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 1-8 and 11-17 are rejected as being anticipated by Ikeda et al. (JP 2008-74905 A).
Regarding claim 1, Ikeda et al. teach gold complex having the structure as shown below (page 11) which corresponds to the instant claimed gold (I) complex having the formula I, wherein X1-X4=P, Cy1-Cy8=p-CF3-Ph, L1-L2=CH2, m=2, n=2, A’=Cl, R1-R8=CF3, n1-8=1, Z1, Z2 and Z3 are absent:
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Regarding claims 2-8, 11 as discussed above, the gold complex taught by Ikeda et al. corresponds to the instant claimed gold (I) complex wherein X1-X4=P, Cy1-Cy8=p-CF3-Ph, L1-L2=CH2, m=2, n=2, A’=Cl, R1-R8=CF3, n1-8=1, Z1, Z2 and Z3 are absent.
Regarding claim 12, the gold complex taught by Ikeda et al. has the structure as shown above which corresponds to the instant claimed compound 2a
Regarding claims 13-17, since the combined reference of Che et al. teach the instant claimed gold(I) complex, the physical properties of the gold(I) complex (i.e. absorbs light at a wavelength of up to 520 nm, extinction coefficient, a radiative decay rate, diffusion-corrected bimolecular quenching rate constant, a reduction potential, etc.) would necessarily follow as set forth in MPEP 2112.01(II).[1]
Allowable Subject Matter
The elected species 4a is allowable.
The prior art search is extended to the extent necessary to determine patentability of the formula as discussed above.
In this case, the Examiner searched the elected species having the formula 4a of claim 12.There was no prior art discovered on the particular gold(I) complex as per applicant elected species. Therefore, the search of the species has been extended to the non-elected elected compound 2a as discussed above.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 4/17/2026 have been considered but are moot in view of the new ground(s) of rejection.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/Primary Examiner, Art Unit 1738
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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