DETAILED ACTION
Claims 1-3, 8, 12, 14, 15, 17, 19, 23, 28, 30, 38, 46, 47, 49, 54, 62, 72, 74, and 82 are currently pending in the instant application. Claims 1-3, 8, 12, 14, 15, 17, 19, 23, 30, and 38 are rejected. Claims 28, 46, 47, 49, 54, 62, 72, 74, and 82 are withdrawn from consideration as being for non-elected subject matter.
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 .
Election/Restrictions
Applicant’s election without traverse of group I and the election of the preparation of the species of compound 3c:
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in the reply filed on 1 December 2025 is acknowledged.
According to MPEP 803.02, the examiner has determined whether the elected species is allowable. Applicants’ elected species does not appear allowable. However, the search and examination has been extended to the preparation of the compound
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: which is not allowable. Claims 1-3, 8, 12, 14, 15, 17, 19, 23, 30, and 38 have been examined to the extent that they are readable on the elected embodiment, the elected species and the above mentioned compound. Claim 28 does not read on the elected species of compound 3c:
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as both formula (300) and (300’):
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require R3 to be
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whereas photoaddition product 3c requires the position equivalent to R3 to be hydrogen.
Drawings
The drawings are objected to because the drawings are unclear due to shading and/or faint lines [Fig. 1A, 1C, 1D, 4A, 4B, 5, 7, 18, 25A, 25B, , 25C, 30, 31A, 31B, 32, 33, 34, 42, 55, 57-64] wherein the shading appears either unnecessary, makes reading the text difficult, is faint, is utilized to compare date, when different shapes, or lines could suffice. Additionally, the text in the following drawings is illegible due to shading, size of text, or overlap of text: Figures 1C, 1D, 4A, 5, 6, 8, 10A, 10B, 17B, 18, 20B, 24, 29B, 31A, 31B, 36B, 37B, 38B, 40B, 44, 47B, and 48. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/019,484 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, claims 15, 17, 28 and 30 are not entitled to the benefit of the prior application as claims 15, 17, 28 and 30 have subject matter not disclosed in the prior application 63/019,484. Claim 15 has formula (200):
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which is found nowhere in the prior application. Claim 17 has formula 2b:
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which is found nowhere in the prior application. Claim 28 has formula (300) and (300’) which are found nowhere in the prior application. Claim 30 has formula 3d-3h which are found nowhere in the prior application. Therefore, claims 15, 17, 28 and 30 are not entitled to the benefit of the prior application.
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.
Claims 1-3, 8, 12, 14, 15, 17, 19, 23, 30, and 38 are 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. Specifically, claims 1-3, 8, 12, 14, 15, 17, 19, 23, 30 and 38 are drawn to a method for synthesizing a compound. The compound synthesized is never limited in the pending claims (also, please see the 112(b) rejection based upon “a compound” and “a photoaddition product”). There is no written description for the method of preparing any compound comprising reacting a 1,3-dicarbonyl compound with an alkene in a solvent in the presence of light to obtain any photoaddition product. The only description provided is for the preparation of formula (III), formula (300), formula (300’), and formula 3a-3h, pages 5-8. There is no other written description for any other compound or any other photoaddition product provided nor is there any written description for how to prepare any other compound by reacting a 1,3-dicarbonyl compound with an alkene in a solvent in the presence of light to obtain any photoaddition product.
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 1-3, 8, 12, 14, 15, 17, 19, 23, 30, and 38 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. Specifically, claims 1-3, 8, 12, 14, 15, 17, 19, 23, 30, and 38 are drawn to the preparation of “a compound” by reacting a 1,3-dicarbonyl compound with an alkene in a solvent in the presence of light to obtain a photoaddition product. There are no steps provided on how to prepare “a compound” after obtaining “a photoaddition product”, therefore, the claims are incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: how to prepare “a compound” from “a photoaddition product.” It appears from applicant’s specification that the “compound” prepared is the “photoaddition product”. It is suggested that “a compound” in claim 1 be amended to “a photoaddition product” and the “a photoaddition product” at the end of claim 1 be amended to “the photoaddition product.”
Claims 12, 14, 15, and 17 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. The rejected claims have the term “comprises” in the definition of the alkene compound. The term, “comprises”, is open-ended and thus, does not exclude additional, unrecited elements, according to MPEP 2111.03(I). Subsequently, it is unclear to the Examiner whether the abovementioned alkene contains other than formula (II) (claim 12), other than an aryl alkene or amino-styrene (claim 14) other than the formula (200) (claim 15) or other than formula 2a or 2b (claim 17). Accordingly, the metes and bounds of the claims are unclear.
The term “comprises” is considered open-ended language and therefore includes 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 transitional term "comprises" is synonymous with "including", "containing", and "characterized by". "Comprises" 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”).
Furthermore, "comprises", used in conjunction with the formula (II), (200), (2a) and (2b) fails to articulate exactly what subject matter is excluded from the claimed scope of compounds, thereby rendering the scope of claims 12, 14, 15, and 17 indefinite.
It is suggested that an amendment to change “comprises” to a form such as
“wherein the alkene is of the formula (II)”, and “wherein the dashed lines is a linker which is…”
“wherein the alkene is an aryl alkene or amino-styrene”,
“wherein the alkene is of the formula (200)”, and
“wherein the alkene is amino-styrene 2a or amino styrene 2b”.
Claim 19 is 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. Specifically, claim 19 is considered indefinite since claim 19 recites the limitations of marmycin “analogue”. The metes and bounds of this limitation is indefinite. The standard definition for analogue (Merriam-Webster Online Dictionary) is “a chemical compound that is structurally similar to another but differs slightly in composition (as in the replacement of one atom by an atom of a different element or in the presence of a particular functional group)." The metes and bounds of analogues are indefinite since it is unclear how a compound may differ marmycin and still be considered an analogue. Applicant has not provided any clear definition for this term within the instant specification and therefore the metes and bounds of the instant claim cannot be clearly identified.
Claims 12, 15, and 23 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. Specifically, claim 12 claims wherein the alkene comprises an alkenyl amine having general formula (II):
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. While the claim specifies that the dashed lines represent a linker that separates the alkenyl group from the amine group it is unclear if the dashed lines as a whole is a linker, or each dashed line is a linker. It is also unclear, based on the formula and the definition if the structure shown, if the formula has a 6 membered ring structure with carbon atoms attached via dashed lines, or if the 6 membered dashed structure is any linker all together. Claim 15 has the formula (200):
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wherein the dashed lines are defined to indicate one or more optional bonds. It is unclear if the structure of dashed lines around RB and RA, which are shaped differently, are the same or different. It is unclear if there is a structural requirement for the dashed lines around RB. It is unclear if the dashed lines around RB must be a 6 membered ring containing nitrogen, which is then unclear how the dashed lines can be optional. Additionally, the dashed line around RA is unclear if the dashed line must by cyclic and how it can be optional. As the alkene bonds attached to the dashed lines around RA require more bonds for correct valence, it is unclear how the dashed lines can be optional. In regards to the dashed lines surrounding RB, it is also unclear how these bonds can be optional as there would not be correct valence. It is also unclear where RA and RB are attached if there are no bonds, and it is unclear how many RA and RB can be present. As the dashed lines surrounding RA and RB are depicted differently, it is unclear if the dashed line surrounding RA is intended to only be one bond compared to 5 bonds for RB. For claim 23, the claim contains the formula (III):
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wherein the dashed lines represent a linker that can be an alkyl chain, a carbocycle, a heterocyclic moiety, or a combination of C-C or C-heteroatom bonds. While the claim specifies that the dashed lines represent a linker it is unclear if the dashed lines as a whole is a linker, or each dashed line is a linker. It is also unclear based on the formula and the definition if the structure shown, if the dashed lines has a 6 membered ring structure with carbon atoms attached via dashed lines, or if the 6 membered dashed structure is any linker all together. As seen in claim 15 wherein RA is surrounded by a single circular dashed line, the clarity of claims 12, 15, and 17 is confusing as these claims have dashed lines in the shape of a 6 membered ring. It is unclear what the shape of the dashed lines is indicating.
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 (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.
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.
Claim(s) 15, 17, and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kandappa et al. J. Am. Chem. Soc. 2021, 143, 3677-3681.
Kandappa et al. provides the preparation of applicant’s elected compound, the compound 3c:
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via the reaction:
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, page 3677which corresponds to the instant claim 15 wherein the alkene is formula (200):
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, for example, wherein RB indicates arene; and RA is H. Kandappa et al. corresponds to claim 17, formula 2a. Kandappa et al. corresponds to claim 30 wherein the photoaddition product is 3c.
Claim(s) 1-3 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. Org. Lett. 2020, 22, 2386-2390.
Li et al. provides the photochemical Minisci reaction in Table 1, page 2387:
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. Additionally, page 2387 provides scheme 2 which provides the compound 21:
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which corresponds to applicant’s instantly claim 1 process of preparing a compound comprising reacting a 1,3-dicarbonyl compound with an alkene in a solvent in the presents of light to obtain a photoaddition product. The reaction in Table 1 and scheme 2 of Li et al. corresponds to instant claim 2 wherein the 1,3-dicarbonyl compound has formula (I):
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wherein one of R1 and R2 is a alkyl and the other is a cyclic moiety and to instant claim 3 wherein R1 is an alkyl and R2 is an aryl. The prior art corresponds to instant claim 38 as the prior art utilizes blue LED light which can have a wavelength within applicant’s claimed range of claim 38 of 350nm-420nm.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 38 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. Org. Lett. 2020, 22, 2386-2390 as evidenced by Heiting,The Handbook for Eye Care and Electronics, chapter 2, section 1: The blue-colored bands of visible light range in wavelength from 380 to 500 nm.
Determining the scope and contents of the prior art
Li et al. provides the photochemical Minisci reaction in Table 1, page 2387:
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. Additionally, page 2387 provides scheme 2 which provides the compound 21:
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Ascertaining the difference between the prior art and the claims at issue.
The difference, if any, is that the prior art provides blue LED light, which as evidenced by Heiting has a range in wavelength from 380 to 500 nm.
Resolving the level of ordinary skill in the pertinent art and considering objective evidence present indicating obviousness or nonobviousness
The difference, if any, is that the blue LED light of Li et al. may be outside of the claimed range of 350-420nm. However, as evidenced by Heiting, blue light can have a wavelength range of 380-420nm. See MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions, section I.
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L ANDERSON whose telephone number is (571)272-0696. The examiner can normally be reached Monday-Friday from 6am-2pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626 ____________________ 16 March 2026
Rebecca Anderson
Primary Examiner
Art Unit 1626, Group 1620
Technology Center 1600