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 .
DETAIL ACTION
This office action is a response to an application filed 8/29/2023 claiming foreign priority to KR10-2022-0126245 filed 10/4/2022.
As filed, claims 1-11 are pending, wherein claim 3 will be an independent claim once the claim is amended per Examiner’s suggestion below.
Election/Restrictions
Applicant’s election without traverse of Group II – Claims 3-6 in the reply filed on 12/9/2025 is acknowledged.
Claims 1, 2, and 7-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/9/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 3-6 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.
Regarding claim 3, the claim recites a process for making a compound of instant formula (1) depicted in claim 1. However, the reactants used in the abovementioned process can only make the compound of instant formula (1) wherein instant variable A is O; instant variable R2 is C6 alkyl; instant variables R3 and R4 are methyl, and instant variable X is Br (i.e. instant formula 3, which is a species of instant formula 1). It is unclear to the Examiner whether the abovementioned process can make the compound of instant formula (1) outside the abovementioned limitations, such as wherein instant variable A is N or C1-C10 alkyl, etc. (e.g. other species encompassed by instant formula 1 outside of instant formula 3). Accordingly, the metes and bounds of this claim is unclear, which rendered the claim indefinite.
Regarding claims 4-6, these claims are directly or indirectly dependent of claim 3, and they failed to correct the indefiniteness issue of claim 3, which rendered these claims indefinite.
Claim Objections
Claim 3 is objected to because of the following informalities:
Regarding claim 3, the claim recites the phrase, “A method of preparing the phenanthroline-based compound of claim 1”.
Claim 1 is drawn to a non-elected invention, which is not eligible for rejoinder, once claims 3-6 become allowable. Accordingly, claim 3 should be amended to an independent claim by incorporating all the limitations of claim 1.
Regarding claim 3, the claim recites the phrase, “forming a first mixture by mixing a phenanthroline compound of Formula (2) below with 1,6-dibromo hexane and 2,2,2-trifluoroethanol and stirring the resulting mixture; and forming a compound of Formula 3 below by adding sodium carbonate to the first mixture and heating the resulting mixture”.
Such expression can be clarified by reciting -- forming a first mixture by mixing a phenanthroline compound of Formula (2) first mixture; and forming a compound of Formula 3 --.
Appropriate correction is required.
To Advance Prosecution
The withdrawn claims 1, 2, and 7-11 are NOT eligible for rejoinder, once the abovementioned claims 3-6 become allowable. Accordingly, the Examiner is suggesting that the Applicant cancels claims 1, 2, and 7-11.
Conclusion
Claims 3-6 are rejected.
Claim 3 is objected.
Claims 1, 2, and 7-11 are withdrawn.
The instant claims are drawn to a process of making a compound of instant formula (1); and instant variable R2 and the use of 1,6-dibromo hexane and 2,2,2-tirfluoroethanol for making the instantly claimed first mixture do not appear to have been disclosed previously in the prior arts. For at least this reason, the instant claims are substantially differentiated from any prior art reference, such as U.S. Patent No. 11,839,154, hereinafter Lee. Furthermore, the prior art provide insufficient guidance or motivation that would have led a person having ordinary skill in the art to arrive at the instantly claimed process.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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