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 .
Applicants' arguments, filed December 15, 2025, have been fully considered but they are not deemed to be fully persuasive. The following rejections and/or objections constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 – Failure to Further Limit
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 15 was 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. This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed August 21, 2025 and those set forth herein.
Applicants traverse this rejection on the grounds that claim 15 is amended to correct the noted informality and claimed claim 15 incorporates all the limitations of claim 11 and compound 36 falls within the scope of claim 11.
These arguments are unpersuasive. Compound 39 was deleted from claim 15 but compound 36 is still present. Compound 36 still does not fall within the scope of claim 11 as R”11 as set forth in claim 11 must comprise an aryl or heteroaryl ring and the 6 membered carbocyclic ring with two double bonds in compound 36 is not an aryl or heteroaryl ring.
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.
Claim(s) 11 was rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fabricius et al. (US 5,519,145; cited on IDS filed 3/21/25). This rejection is MAINTAINED for the reasons of record set forth in the Office Action mailed August 21, 2025 and those set forth herein.
Applicants traverse on the grounds that the revised scope of claim 11 no longer reads on the compounds from Fabricius.
These arguments are unpersuasive. The cited compounds D-21, D-23 and D-25 of Fabricius et al. had –(CH2)4SO3- for R1 present off the ring nitrogen atoms, at least one carboxylic acid group is present (R4) (see end of instant claim 11), a non-hydrogen substituent for at least one of instant R1 – R6 as R6 = SO3- and sodium counterions are present (Q). The claim still requires at least one of R1 – R6 to not be hydrogen and one R1, R2, R4 and R5 can be SO3- with a sodium counterion. Y” is actually now broader than before but still can be COOR’10. The amended range for n1 and n2 is narrower but 3 is still a permitted value and the compounds still meet the limitation of R7 and R8 being a C1 alkyl (methyl) group. Therefore claim 11 as amended is still anticipated by the cited compounds of Fabricius et al.
Conclusion
THIS ACTION IS MADE FINAL. 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 Nissa M Westerberg whose telephone number is (571)270-3532. The examiner can normally be reached M - F 8 am - 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Nissa M Westerberg/Primary Examiner, Art Unit 1618
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