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 10/15/2025.
As filed, claims 1-21 are pending.
Response to Amendments/Remarks
Applicant’s amendments/remarks, filed 10/15/2025, with respect to claims 1-21, 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 1-13 and 18-21 is maintained because the Applicant’s remarks are not persuasive. Claim 1 recites, “R1 is H, halo, alkyl, . . .” and “R1 comprises at least one of a prodrug moiety and a reporter moiety”, while claim 12 recites, “R2 is H, alkyl, heteroalkyl,…” and “R2 comprises at least one of a reporter moiety and a prodrug moiety”. In both claims, “is” is close-ended, while “comprises” is open-ended, which is contradictory to one another, and the contradiction introduces ambiguity, which rendered the claims indefinite. In addition, for claims, 1, 3, 6, 12, and 19, as mentioned in the previous office action, “comprises” does not exclude additional, unrecited elements, and “a” compound is singular and requires a definite chemical formula. Having “comprises” used in conjunction with “compound” fails to articulate exactly what subject matter is excluded from the claimed scope of compounds, thereby rendering the scope of the claims indefinite.
The § 102(a)(1) rejection of claims 1-5, 8-10, and 12-20 by Hankins is withdrawn because Hankins is removed as prior art as one of Applicants, John C. Lukesh III, submitted a declaration under 37 CFR 1.130(a), which stated that S. Israel Suarez, Madison A. Kalk, Nolan M. Green, and Megan N. Harty, who are the co-authors of the Hankin reference, are working under the direction of the Applicants and did not contribute to the conception of the invention in the instant application (i.e. explaining the abovementioned co-authors’ involvement, and the abovementioned co-authors obtained the subject matter of the instant application from the Applicants). In addition, the declaration stated that the other Applicant, Katherine Virginia Abrose, used the name, Rynne A. Hankins, on scientific publication, such as the Hankins reference. Because the publication date of the Hankins reference (i.e. 8/24/2020) is within the one year grace period from the effective filing date of the instant application (i.e. 6/24/2021 from the PCT application), the filing of the abovementioned declaration disqualifies Hankins reference as prior art under 102(b)(1)(A) exception.
The claim objection of claims 13 and 15 is withdrawn per amendments.
The claim objection of claims 8, 9 ,and 18 is maintained because the Applicant’s remarks are not persuasive. The Examiner finds the proposed amendments cited in claims 8, 9, and 18 would clarity the claim or improve the readability of the claims.
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 1-13 and 18-21 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 claims 1, 3, and 6, the claims recite the phrase, “wherein R1 comprises”.
Firstly, variable R1 recites the term "comprises." Forms of the term “comprise” are considered open-ended language and therefore include 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 term “compound” contradicts the open language "comprises." A "compound" is defined as a substance whose molecules consist of unlike elements and whose constituents cannot be separated by physical means. Grant & Hackh's Chemical Dictionary (5th Ed. 1987) at page 148 (see PTO-892 form mailed on 7/15/2025). By contrast, a composition is defined as elements or compounds forming a material or produced from it by analysis. Id. In other words, a compound is a molecule with more than one element, and a composition is a mixture of two or more compounds or molecules.
The transitional term "comprising" is synonymous with "including", "containing", and "characterized by". "Comprising" 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”).
Thus, a contradiction arises within the definition of R1 because a "compound" with these variables requires a definite chemical formula, and the open-ended term "comprises" does not exclude unrecited elements. Furthermore, "comprising", used in conjunction with "compound" fails to articulate exactly what subject matter is excluded from the claimed scope of compounds, thereby rendering the scope of claims 1, 3, and 6 indefinite.
Regarding claim 12, the claim recites the phrase, “wherein R2 comprises”. Firstly, variable R2 recites the term "comprises." Forms of the term “comprise” are considered open-ended language and therefore include 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 term “compound” contradicts the open language "comprises." A "compound" is defined as a substance whose molecules consist of unlike elements and whose constituents cannot be separated by physical means. Grant & Hackh's Chemical Dictionary (5th Ed. 1987) at page 148. By contrast, a composition is defined as elements or compounds forming a material or produced from it by analysis. Id. In other words, a compound is a molecule with more than one element, and a composition is a mixture of two or more compounds or molecules.
The transitional term "comprising" is synonymous with "including", "containing", and "characterized by". "Comprising" 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”).
Thus, a contradiction arises within the definition of R2 because a "compound" with these variables requires a definite chemical formula, and the open-ended term "comprises" does not exclude unrecited elements. Furthermore, "comprising", used in conjunction with "compound" fails to articulate exactly what subject matter is excluded from the claimed scope of compounds, thereby rendering the scope of claim 12 indefinite.
Regarding claim 19, the claim recites the phrase, “the compound comprises a reporter moiety”, wherein the transitional phrase, “comprising” is an open-ended language and therefore include 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 term, “compound”, contradicts the open language "comprises." A "compound" is defined as a substance whose molecules consist of unlike elements and whose constituents cannot be separated by physical means (see Grant & Hackh's Chemical Dictionary (5th Ed. 1987) at page 148). By contrast, a composition is defined as elements or compounds forming a material or produced from it by analysis. Id. In other words, a compound is a molecule with more than one element, and a composition is a mixture of two or more compounds or molecules.
The transitional term "comprising" is synonymous with "including", "containing", and "characterized by". "Comprising" 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”).
Thus, a “compound" is singular and requires a definite chemical formula, and the open-ended term "comprises" does not exclude unrecited elements. Furthermore, “comprising”, used in conjunction with “compound” fails to articular exactly what subject matter is excluded from the claim scope of compounds, thereby rendering the scope of claim 19 indefinite.
Regarding claims 2-11, these claims are directly or indirectly dependent of claim 1, and they failed to correct the indefiniteness issue of claim 1, which rendered these claims indefinite.
Regarding claims 13 and 18-21, these claims are directly or indirectly dependent of claim 12, and they failed to correct the indefiniteness issue of claim 12, which rendered these claims indefinite.
Claim Objections
Claims 8, 9, and 18 are objected to because of the following informalities:
Regarding claim 8, the claim recites the phrase, “A method of detecting the presence of hydrogen peroxide”.
Such expression can be clarified by reciting -- A method of detecting a presence of hydrogen peroxide --.
Regarding claim 8, the claim recites the phrase, “with a compound of claim 3 and detecting the presence of a lactone”.
Such expression can be clarified by reciting -- with a compound of claim 3 and detecting a presence of a lactone --.
Regarding claim 9, the claim recites the phrase, “wherein the concentration of the lactone”.
Such expression can be clarified by reciting -- wherein
Regarding claim 9, the claim recites the phrase, “is used to determine the concentration of the hydrogen peroxide”.
Such expression can be clarified by reciting -- is used to determine
Regarding claim 18, the claim recites the phrase, “A method of producing a persulfide in the presence of hydrogen peroxide”.
Such expression can be clarified by reciting -- A method of producing a persulfide in --.
Appropriate correction is required.
Allowable Subject Matter
Claims 14-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Claims 1-13 and 18-21 are rejected.
Claims 8, 9, 14-17, and 18 are objected.
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.
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.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621