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 .
Election/Restrictions
Applicant’s election without traverse of group I and a compound of formula (II) in the reply filed on 2026 January 20 is acknowledged. Due to no prior art against the method of claim 1 and a compound of formula (II), a search of claim 1 is extended to a compound of formula (III). Claims 1-9, 11, 12, 14-16, 18-24, and 28 are pending. Claims 1-6, 8, 9, 11, 12, 14, 15, 16, 18, and 19 are examined on the merits.
Claims 7, 20-24, and 28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.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 2026 January 20.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2023 May 15 was submitted in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-6, 8, 9, 11, 12, 14, 15, 16, 18, and 19 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.
Claims 1-6, 8, 9, 11, 12, 14, 15, 16, 18, and 19 are unclear for the following reasons.
The structural metes and bounds of singly occupied molecular orbital, SOMO, acceptor residue. Claim 1 only specifies that it comprises an alkene group. What other functional groups are present in the SOMO acceptor residue?
In formula (III), the boron ring heteroatom has a formal charge of negative one because it is attached to four groups. What is the corresponding cation that neutralizes this anion?
What are the structural metes and bounds of variable R? Claim 1 does not provide any guidance to the functional groups that are permitted to be present in this variable.
In claim 19, what group is attached to functionalized-B-CH2R so it can react with a catechol of formula (IIB)? Boron needs three groups to attached to be neutral.
Claim 2, 4-6, and 9 recite various groups for variable R. There is insufficient antecedent basis for this limitation in the claim because claim 1 does not recite clear metes and bounds with respect to variable R.
Claim 8 and 11 each recites a possibility for the SOMO acceptor residue. There is insufficient antecedent basis for this limitation in these claims because claim 1 does not recite clear metes and bounds with respect to this group.
Regarding claim 2, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Is the linker limited to any linker group or the group L1? The usage of the word “preferably” is interpreted “such as”.
See MPEP § 2173.05(d).
Regarding claim 12, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Is group A limited to the first four groups, the second three groups, or only 2-pyridinyl.
See MPEP § 2173.05(d).
Regarding claim 15, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Is the source of Fe(II) limited to the five first sources or the last one, FeSO4•H2O?
See MPEP § 2173.05(d).
Regarding claim 16, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Is the photocatalyst limited to a Ru(II) or Ir(II) based catalyst, a Ru(II) catalyst, or Ru(bpy)3Cl2 or Ru(bpm)3Cl2?
See MPEP § 2173.05(d).
Regarding claim 18, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. What wavelength range do applicants intend for the light radiation: 300 to 600 nm; 400 to 500 nm; or 430 to 470 nm?
See MPEP § 2173.05(d).
Conclusion
Claims 1-6, 8, 9, 11, 12, 14, 15, 16, 18, and 19 are not allowed.
The following is a statement of reasons for the indication of allowable subject matter: SUN (US 20250257095, published 2025 August 14) describes example 1 (pages 20-21, paragraphs [0121]-[0123]. This does not anticipate or render obvious a process of claim 1 because an unsaturated cyclic group is not attached to a sulfonyl group and the reference was published 2025 August 14, which is after the effective filing date of 2020 July 16.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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