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 1-15 and 17-21 are currently pending in the instant application. Applicants have amended claims 1, 17 and 18, cancelled claim 16 and added new claim 21 in an amendment filed on November 6, 2025. Claims 1-15 and 17-20 are rejected and claim 21 is considered allowable in this Office Action.
I. Response to Arguments/Remarks
Applicants’ amendment, filed on November 6, 2025, has overcome the rejection of claims 1-5, 9-13 and 19 under 35 USC 103 as being unpatentable over Bitner-Michalska, et al. (WO 2016/203390 A1) and the objection of claims 6-8, 14-18 and 20 as being dependent upon a rejected based claim. The above rejection and objection have been withdrawn.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 1-15 and 17-20 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. Specifically, claim 1 contains the limitation that the process contains step (b) which is “a step selected from (b1) and (b2)”. The broadest interpretation of this limitation is that the process can either include step (b1) or (b2) but does not have to include both. Applicants have amended step (b1) to include the limitation “further comprising a first inorganic base” and also have amended step (b2) to include the limitation “and a second inorganic base”. The broadest interpretation of the limitation in step (b2) is that if there is a “second inorganic base” then it is assumed that there is a “first inorganic base” earlier in the process. The issue is that according to the language in claim 1, step (b1) is not required for this claimed process. So if step (b1) is not required and is not present then where is the “first inorganic base” present during the claimed process. It is unclear if there is another inorganic base” being used in step (a) that is not mentioned or are Applicants intending that both step (b1) and (b2) are present in the reaction. Because of this clarity issue with the newly amended claim limitation, the claims are considered indefinite. To overcome the rejection, Applicants are suggested to, for example, amend claim 1 to delete the terms “first” and “second” in front of the “inorganic base” so that the limitation is no longer unclear.
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.
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/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626