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 .
Claim Objections Withdrawn
The objection to claim 61, outlined in the previous Office Action, has been overcome by inventor’s amendment. The amendment cancels the claim.
The objection to claims 2-4, 8-13, 15, 16, 19-28, 30, 31, 33-36, 39-51 and 53-55, as being dependent upon a rejected base claim but otherwise allowable, is withdrawn. The objection is moot. (The amendment cancels claims 2, 27, 28, 30 and 31.)
Claim Objections, NEW
Claim 33 is objected to because of the following informalities: in the definition of variable R7, the letter “…s…” should be the verb: is.
Appropriate correction is required.
Inventor’s assistance is respectfully requested in correcting any other minor grammatical and/or spelling errors which may be present in the claim set.
112(b) Rejections Withdrawn
The rejections of claims 14, 17, 18, 29, 32 and 56-72 under 35 USC 112(b) or 35 USC 112 (pre-AIA ), second paragraph, outlined in the previous Office Action, have been overcome by inventor’s amendment. The amendment cancels the claims.
Claim Rejections - 35 USC § 112(b), NEW
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.
Claim 1 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.
It is unclear why a definition for a variable R7 is recited in the claim when no such variable is present in the diagramed structure or its corresponding variable definitions.
The examiner respectfully suggests deleting the definition.
Claims 8-11 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.
It is unclear why definitions for variables R2 and R9 are recited in the claims when no such variables are present in the diagramed structures or their corresponding variable definitions.
The examiner respectfully suggests deleting the definitions.
Claim 33 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.
In the definition of variable R1, the definition of variable Q is unclear because it is undefined.
Claim 55 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.
There is insufficient antecedent basis for the diagramed structures in the claim. Note that inventor’s latest amendment to independent claim 1, the claim from which claim 55 immediately depends, now defines X as simply N (i.e. a nitrogen atom). The corresponding moiety in the X position in the diagramed structures, however, is a CH.
Claims 3, 4, 34-36, 39-51, 53 and 54 are also 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 claims all depend, or ultimately depend, from an indefinite claim yet do not relieve the indefiniteness. Dependent claims 3, 4, 34-36, 39-51, 53 and 54 are also, therefore, indefinite.
112(d) Rejections Withdrawn
The rejection of claim 38 under 35 USC 112(d) or 35 USC 112 (pre-AIA ), fourth paragraph, outlined in the previous Office Action, has been overcome by inventor’s amendment. The amendment cancels the claim.
102 Rejections Withdrawn
The rejection of claims 1, 5-7, 37 and 52 under 35 USC 102(a)(1), outlined in the previous Office Action, has been overcome by inventor’s amendment. With respect to claims 5-7, 37 and 52, the amendment cancels the claims. With respect to claim 1, the amendment narrows the scope of the claimed subject matter such that it no longer reads on the cited art.
Claim Rejections - 35 USC § 102, NEW
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 8 is rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Acta Chimica Academiae Scientiarum Hungaricae (1978), 98(3), pp. 303-313, prior art of record.
The reference teaches inventor’s compound (page 306, Table I, Product (6)p (i.e. the last entry)).
Allowable Subject Matter
Claims 12, 13, 15, 16 and 19-26 are allowed.
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 BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EST.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 2/20/2026