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 .
Receipt is acknowledged of IDS filed on 03/09/2023.
Claims 1-20 are pending.
Claims 2, 5, 9-10, 12-14, and 17-18 are withdrawn.
Election/Restrictions
Applicant's election with traverse of Species A, Formula (11) in the reply filed on 12/22/2025 is acknowledged. The traversal is on the ground(s) that the search and examination of the entire application could be made without serious burden. This is not found persuasive because searching all of the claims would require searching in numerous different classes and subclasses, as well as, a different searching focus depending on whether the product or processes are being searched. Thus, the search would pose an undue burden on the Office.
The requirement is still deemed proper and is therefore made FINAL.
Foreign Priority
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Since a certified English translation of the foreign application was not provided. The effective filing date for this application is 03/09/2023.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 6-8 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a written description rejection.
A generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention the achieves the claimed results and do so by showing that that the applicant has invented species sufficient to support a claim to a functionally-defined genus. A description that merely renders a claimed invention obvious may not sufficiently describe the invention for the purposes of the written description requirement of 35 U.S.C. 112 (MPEP 2163 (I)).
With regard to claim 1, the specification provides insufficient written description to support the broad species of connections that can be used to bind the two nitroxide radical-containing groups represented by General Formula (I) encompassed by claim 1, since there is no description of any way to bind the two nitroxide radical-containing groups other than through an identical carbon atom provided in the specification. The specification describes specific embodiments, such as compounds 11-13
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(Applicant’s specification, page 20), however all embodiments described, including those shown above, the two nitroxide radical-containing groups are bonded through an identical carbon atom, which is highlighted above. The limited number of species only showing binding through this one type of connection does not provide sufficient description for anywhere within the molecule as described in instant claim 1.
The state of the art does not teach/describe two nitroxide radical-contain groups with the general formula bound together, therefor there is no clear guidance to one skilled in the art on how to bind these two groups together.
The dependent claims that do not fix this issue fall therewith.
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 and 3, 4, 6-8, 11, 15-16 and 19-20 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 regard to claim 1, it is unclear why the term “in General Formula (1), R1, R2, R3, and R4 each independently represent a C1-10 alkyl group unsubstituted or substituted with a substituent containing no fluorine atoms” is in parenthesis. Thus, it is unclear if this is a limitation in the claim or just a preferred embodiment.
In regard to claim 1, it is unclear what “…” implies within the formula “ -O-C(CF3)3…”.
In regard to claim 3, it is unclear what “…” implies within the formula “-CH2-O-C(CF3)3…”.
The dependent claims fall therewith.
Conclusion
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/S.L.M./ Examiner, Art Unit 1618
/Michael G. Hartley/ Supervisory Patent Examiner, Art Unit 1618