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
Claims 1-13 and 16-20 are currently pending in the instant application. Applicants have amended claims 1, 7, 9, 11, 13 and 16-20 in an amendment filed on March 30, 2026. Claims 16-20 are rejected and claims 1-13 are considered allowable in this Office Action.
I. Response to Remarks
Applicants’ amendment, filed on March 30, 2026, has overcome the rejection of claims 16-20 under 35 USC 112(b) as being incomplete for omitting essential steps; the rejection of claims 7-11 under 35 USC 112(b) as failing to define the compound of formula I; the rejection of claims 7-11 under 35 USC 112(b) as lacking antecedent basis for “the compound of formula (I)”; the objection of claims 1, 13 and 16-20 for informalities. The above rejections and objection have been withdrawn.
II. Rejection(s)
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 16-20 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 16-20 have been amended to include the limitation “wherein the improvement comprises” but there is no mention of “an improvement” previously in the claims. It is unclear what “improvement” Applicants are referring to. The limitation lack antecedent basis. Applicants are suggested to amend the claim to delete the phrase “the improvement” to overcome the rejection.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 16-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The phrase “In a method for preparing…” is written in improper format because a “in a method” can only be properly claimed as a process or method. It is suggested that applicant amend the claims by rewriting the claims as a process or method, i.e. “A method for preparing” in each of claims 16-20 to overcome the rejection.
III. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is (571)272-9043. The examiner can normally be reached on M-F 7AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626
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