DETAILED ACTION
Claims 1-16 are currently pending in the instant application. Claims 1-9 are rejected. Claim 10 is objected. Claims 11-16 are withdrawn from consideration as being for non-elected subject matter.
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 of Invention I and the species 1-(ethoxycarbonyl)-2-phenyl-3-methylcyclpropenium hexafluorophosphate in the reply filed on 3 October 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
According to MPEP 803.02, the examiner has determined whether the elected species is allowable. Applicants’ elected species appears allowable. Therefore, the search and examination has been extended to the compounds of claim 10 which appear allowable and further to the compound:
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which is not allowable.
Claims 1-10 have been examined to the extent that they are readable on the elected embodiment, the elected species and the above mentioned compounds. According to MPEP 803.02 III. A:
If the examiner determines that the elected species is allowable over the prior art, the examination of the Markush claim will be extended. If prior art is then found that anticipates or renders obvious the Markush claim with respect to a nonelected species, the Markush claim shall be rejected; claims to the nonelected species would still be held withdrawn from further consideration. The prior art search will not be extended unnecessarily to cover all nonelected species, and need not be extended beyond a proper Markush grouping.
Specification
The abstract of the disclosure is objected to because the abstract utilizes legal phraseology. The abstract includes the term “said” A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Improper Markush Grouping Rejection
Claims 1-9 are rejected on the basis that they contain an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of claims 1-9 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: The compounds claimed in claims 1-9 do not contain a constant core structure from which the common use would flow from. Instant claims 1-9 claims compounds of
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wherein R1, R2, R3, E and Xn- all can vary, with the only common structure being a cyclopropenium. R1, R2, and R3 each can be an alkyl, alkenyl or any ring system comprising 1-5 rings which can be saturated, unsaturated, aromatic, with each ring comprising from 3 to 7 members which can be, C, CH, Ch2, O, N, NH, NR4 and S, each ring being isolated, bridged, or fused. The definition of R1, R2, and R3 variables includes a multitude of different heterocyclic and heteroaromatic ring systems. Variable E can be selected from a multitude of electron withdrawing groups such as haloalkyl, COOR3, formyl, nitro, nitrile, and an aromatic ring system that comprises from 1 20 2 6-membered aromatic rings which contains C, CH, and N, etc.. Variable E includes a multitude of different heteroaromatic ring systems. X can be a multitude of anions such as perchlorate, B(Ar)4; hexaflurophosphate, etc. As the claims are drawn to many varying structures, including varying heterocyclic and heteroaromatic rings, the claims are drawn to many different scientific classifications based on the structures which are not shared amongst all of the members of the claim as the varying heterocyclic and heteroaromatic rings would change the classification, all of which can and do have a multitude of varying structures that do not share a core structure from which the common use would flow. The compounds found in instant claims 1-9 do not share a core structure and have varying classification based upon the amount of heterocyclic or heteroaromatic rings present, the identification of the heterocyclic or heteroaromatic rings present, the location of the heterocyclic or heteroaromatic rings present, and whether the heterocyclic rings are part of a bridged ring system. These varying compounds do not belong to a recognized chemical class and are not recognized to be functionally equivalent.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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 1-9 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.
The instant claim 1 has multiple instances of the term “comprising” in the definition of the compound, for example:
Regarding claim 1 (and its dependent claims 2-4, 6, 8 and 9), the claim recites the following phrases:
In variable E, “an aromatic ring system comprising from 1 to 2 6 membered aromatic rings”
In variables R1, R2, and R3, “a ring system RS comprising from 1 to 5 rings, each ring being saturated, unsaturated, or aromatic, each ring comprising from 3 to 7 members”
Regarding claim 5, the claim recites the following phrase:
“”and a ring system comprising from 1 to 2 aromatic rings, each ring comprising from 5 to 6 members”
Regarding claim 7, the claim recites the following phrase:
“a ring system comprising from 1 to 2 rings, each ring being saturated, unsaturated or aromatic, each ring comprising from 3 to 7 members”
In the abovementioned phrases, the term, “comprising”, is open-ended and thus, does not exclude additional, unrecited elements, according to MPEP 2111.03(I). Subsequently, it is unclear to the Examiner whether the abovementioned ring systems can have more than the listed rings, i.e. 6 rings, 7 rings, and if the rings can contain atom(s) outside of the recited atoms (e.g. C, N, O, and S), such as phosphorus (P) or if a larger number of atoms could be present and would read on the above mentioned limitations. Additionally, a ring system comprising from 1 to 2 6 membered rings, it is unclear whether additional rings can be present that do not have 6 members, such as 5 member rings. Accordingly, the metes and bounds of these claims is unclear, which renders the claims indefinite.
The term “comprising” or forms of the term are considered open-ended language and therefore include additional subject matter that is not described in the instant specification and is not particularly pointed out or distinctly claimed. The identity of the additional atoms or groups is unknown and how to determine the identity of the additional atoms or groups is not pointed out or distinctly claimed.
The term “compound” contradicts the open language "comprising." A "compound" is defined as a substance whose molecules consist of unlike elements and whose constituents cannot be separated by physical means. Grant & Hackh's Chemical Dictionary (5th Ed. 1987) at page 148. By contrast, a composition is defined as elements or compounds forming a material or produced from it by analysis. Id. In other words, a compound is a molecule with more than one element, and a composition is a mixture of two or more compounds or molecules.
The transitional term "comprising" is synonymous with "including", "containing", and "characterized by". "Comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“comprising” leaves “the claim open for the inclusion of unspecified ingredients even in major amounts”).
Thus, a contradiction arises within the definition of instant discussed variables in claims 1-9 because a "compound" requires a definite chemical formula, and the open-ended term "comprising" does not exclude unrecited elements. Furthermore, "comprising", used in conjunction with "compound" fails to articulate exactly what subject matter is excluded from the claimed scope of compounds, thereby rendering the scope of claims 1-9 indefinite.
It is suggested that an amend to change “comprising” to a form such as “with”, for example.
Claim Rejections - 35 USC § 102
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(s) 1 and 5-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lloyd, Douglas; Preston, N. W. Chemistry & Industry (London, United Kingdom) (1969), (31), 1055-6, Lloyd et al.
Lloyd et al. discloses the compound
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on page 1055:
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wherein R is defined as Me. This compound corresponds to the formula (I) of the instant claims:
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wherein R1 and R2 are each a ring system with 1 ring being aromatic, specifically phenyl; E is an aromatic ring system comprising 1 6 membered aromatic ring with ring members being selected from C, CH, and N, being at least one member N and the ring further substituted with two groups C1 alkyl, as “comprising” is open-ended, the aromatic ring system also contains a 5 membered ring, n is 1, and Xn1 is perchlorate. In regards to claims 7 and 8, it is noted that R3 does not have to be present on the formula (I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L ANDERSON whose telephone number is (571)272-0696. The examiner can normally be reached Monday-Friday from 6am-2pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626 ____________________ 22 January 2026
Rebecca Anderson
Primary Examiner
Art Unit 1626, Group 1620
Technology Center 1600