DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Restriction/Election Requirement
The restriction/election requirement as set forth in the Office Action filed 12/18/25 is herein withdrawn.
Claims 1-15 are pending. No claims have been withdrawn from consideration.
Specification
The disclosure is objected to because of the following informalities:
The Specification filed 12/01/22 recites the chemical structures on the following pages: 4, 11-14, 20, 21, and 28-32 as well as the graphics for the equation in paragraph [00188] which are all graphically unclear due to their small sizes and/or low resolutions; they are barely legible. They all need to be replaced by structures which are clearly legible, with all bonds and atoms that are clearly drawn (i.e., with solid lines and of sufficient size).
Appropriate correction is required.
Claim Objections
6. Claims 1-15 are objected to because of the following informalities:
Claim 1, which the other claims are dependent upon, and Claim 5 recites chemical structures which are all graphically unclear due to their small sizes and/or low resolutions; they are barely legible. They all need to be replaced by structures comprising bonds and atoms which are clearly drawn (i.e., with solid lines and of sufficient size).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 1-15 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.
Claim 1, which the other claims are dependent upon, recites the following for Chemical Formulae 2-1 to 2-3 and 3:
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. However, the claim also requires the following for the formulae (respectively):
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which renders the exact scope of Chemical Formulae 2-1 to 2-3 and 3 as it is not clear if the two adjacent substituents as recited above in each of the formulae need to be “connected to each other to form one ring structure” (i.e., whether or not the ring formation is an optional alternative) selected from the above recited groups.
Correction is required.
9. 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.
10. Claim 5 is 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.
Claim 5, which is dependent on Claim 1, recites compounds none of which are encompassed by the scope of Chemical Formula 1. Notice that LA and LB must read on the following limitations for Chemical Formulae 2-1 to 2-3 and 3, respectively:
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. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY L YANG whose telephone number is (571)270-1137. The examiner can normally be reached Mon-Fri, 6am-3pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer A Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAY YANG/Primary Examiner, Art Unit 1786
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