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 .
Claims 1-21 are currently pending.
Receipt of remarks and amendments filed on 12/15/2025 is acknowledged.
Claim Rejections - 35 USC § 112
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.
Claims 2, 5-6, 9-10 and 19-21 are 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. 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.
Claim 2 recites a temperature
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. Claim 2 depends of claim 1, which requires a temperature
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Claim 19 recites a temperature
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. Claim 19 depends of claim 16, which requires a temperature
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The dependent claims are rejected for containing the same issues.
Applicant argues
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This is not persuasive. In claim 1, step (a) is a dissolving step and step (b) is a reacting step. The limitation of the temperature range between 20°C and 50°C in claim 1 pertains to the reacting step (b). The limitation of claim 2 recites that the aqueous solution is reacted with the sodium 2-pyrrolidinone-5-carboxylate at a temperature between 20°C and 100°C. Claim 2 is clearly directed to the reacting step (b) of claim 1.
Regarding the issues with claim 19, the same remarks described above with respect to claim 2 are applicable.
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 14 and 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 14 has been amended to depend of claim 11. Claim 14 recites the limitation "the pH of an aqueous solution". There is insufficient antecedent basis for this limitation in the claim.
The dependent claims are rejected for containing the same issues.
Duplicate Claims, Warning
Applicant is advised that should claim 6 be found allowable, claim 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. The claims cover the same exact subject matter.
When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k). The claims encompass the same exact subject matter.
Appropriate correction is required.
Claims 5, 7, 9 and 14 are objected to.
Claim 5 recites “adjusting the pH of an aqueous solution”. This should be corrected to “adjusting the pH of the aqueous solution”.
Claim 7 recites “adjusting the pH of an aqueous solution”. This should be corrected to “adjusting the pH of the aqueous solution”.
Claim 9 recites “adjusting the pH of an aqueous solution”. This should be corrected to “adjusting the pH of the aqueous solution”.
Claim 14 recites “adjusting the pH of an aqueous solution”. This should be corrected to “adjusting the pH of the aqueous solution”.
Conclusion
Claims 1, 3-4, 11-13 and 16-18 are allowable.
Claims 2, 5-6, 9-10, 14-15 and 19-21 are rejected.
The closest art is US 6,288,240. The prior art disclosed the synthesis of the same compound, however, under different conditions and with different oxidants. The instant claims would not have been obvious over the teachings of the prior art.
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621