DETAILED ACTION
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 .
Priority
The instant application is a 35 USC 371 National Stage filing of international application No. PCT/CN2021/074976, filed February 3, 2021, which claims foreign priority under 35 USC 119(a)-(d) from Chinese application CN 2021011112741.0, filed October 16, 2020.
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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 28, 2023 was in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the IDS document was considered and a signed copy of the 1449 form is attached.
Election/Restrictions
Applicant’s election with traverse of the invention of Group I, claims 1-6, drawn to compounds of Chemical Formula I in the reply filed on September 29, 2025 is acknowledged. Since Applicant’s reply did not present any specific traversal, the election is treated as an election without traverse. Further, Applicant’s election of compound 8 in the same reply is also acknowledged. Claim 1 within the elected group reads on the elected species.
In accordance with the MPEP, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
As indicated above, the examiner searched the compound based on the elected species above, wherein: prior art was discovered over the elected species of compound. Therefore, the scope of the search and consideration was not extended further beyond the scope of the elected species.
Status of Claims
Currently, claims 1, 3-13 and 15-18 are pending in the instant application. Claims 3-13 and 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention there being no allowable generic or linking claim.
Claim 1 reads on the elected invention/species and is therefore under consideration herein.
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.
Claim 1 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “the hexadeca amino-modified zinc phthalocyanine comprises 3-(dimethylamino)phenoxy substituent, the substituent is separately located at peripheral positions α and β of a phthalocyanine ring, namely positions 1, 2, 3, 4, 8, 9, 10, 11, 15, 16, 17, 18, 22, 23, 24 and 25,” and the claim also recites “the hexadeca amino-modified zinc phthalocyanine has a structural formula as follows” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Notably, the structural formula stands on its own to define the claimed compounds, such that the generic broader description of the compound is unnecessary and renders the claim scope unclear. The claim is further unclear because the broader generic description of the compounds uses the open term “comprises” in the definition of the peripheral substituents, while the chemical depiction of the compound formula clearly defines each R substituent. It is suggested that for the sake of clarity, applicants delete the language “the hexadeca amino-modified zinc phthalocyanine comprises 3-(dimethylamino)phenoxy substitutent, the substituent is separately located at peripheral positions α and β of a phthalocyanine ring, namely positions 1, 2, 3, 4, 8, 9, 10, 11, 15, 16, 17, 18, 22, 23, 24 and 25; and” as well as the language “comprises 3-(trimethylammonium)phenoxy substituent, the substituent is separately located at peripheral positions α and β of a phthalocyanine ring, namely positions 1, 2, 3, 4, 8, 9, 10, 11, 15, 16, 17, 18, 22, 23, 24 and 25, and the hexadeca ammonium-modified zinc phthalocyanine.”
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 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.
It is noted that with respect to the rejection below, for the purposes of determining if a reference is a “printed publication” for the purposes of 102(a)(1), MPEP 2128 states the following:
PNG
media_image1.png
99
480
media_image1.png
Greyscale
Specifically regarding electronic publications, such as online databases, as prior art the following is noted:
PNG
media_image2.png
78
750
media_image2.png
Greyscale
where “prior art disclosures…on an on-line database are considered to be publicly available as of the date the item was publicly posted.” Since the database entries below list the dates that the compounds were entered into the on-line database, the compounds were made publicly available as of those dates in the citation, and the claims are anticipated.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the STN Registry database entry for CAS RN 2567579-15-9, which has an entry date of 05 January 2021.
Since the entry date represents the date that the compound entered a publicly available database on STN, this represents the date that each compound was made accessible to the public.
The STN Registry database entry listed above discloses the compound
PNG
media_image3.png
705
707
media_image3.png
Greyscale
which reads on the claimed hexadeca ammonium-modified zinc phthalocyanine elected species where X is I. Since the compound disclosed in the prior art has the same structure as the instantly claimed compound, each and every required element of the claim is taught and the claim is anticipated.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alicia L. Otton whose telephone number is (571)270-7683. The examiner can normally be reached on Monday - Thursday, 8:00-6:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Fereydoun Sajjadi can be reached on 571-272-0699. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALICIA L OTTON/Primary Examiner, Art Unit 1699