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 .
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 7-16 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.
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 7 recites the broad recitation photoinitiator of formula (Ia) with R’1 as an aryl substituted with alkyl, Qui’ as quinolone of formula (A’) with R’2, R’3, R’4, and R’5 independently as hydrogen, -O-R8, -S-R8, with R8 as C1-C20 alkyl, R’6 as H or C1-C4 alkyl, and R’7 as C1-C10 alkyl, and the claim also recites
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, 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. Accordingly, dependent claims 8-12 are indefinite.
Claim 13, the phrase "as defined in claim 1" renders the claim indefinite because it is unclear which limitation(s) defined in claim 1 correspond to the claimed invention [see MPEP § 2173.05(f)]. Accordingly, dependent claims 14-16 are indefinite.
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.
Claim 8 is 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. Claim 8 recites formula (Ia) R’1 is an aryl group substituted with halogen atom, alkyl, cycloalkyl, alkoxy, alkylamino, dialkylamino, alkylthio, arylthio group or heterocyclic groups, which fails to further limit formula (Ia) of claim 7 which recites R’1 is an aryl substituted with halogen atom, alkyl, cycloalkyl, alkoxy, alkylamino, dialkylamino, alkylthio, arylthio group or heterocyclic groups. 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.
Allowable Subject Matter
Claims 1-6 are allowable.
Claims 7 and 9-16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Tomisawa et al. (Chem. Pharm. Bull. 1974, 22, 2091) discloses the synthesis of 3-benzoyl-1‐methyl-2(1H)‐quinolone (VII). There is no motivation to include 50 to 99.9 wt% of an ethylenically unsaturated compound and 0.1 to 35 wt% of VII. Tomisawa et al. (Chem. Pharm. Bull. 1974, 22, 2091) does not disclose a photoinitiator of formula (Ia) with R’1 as a substituted aryl. Kaya et al. (WO 2004/103974) discloses the compounds are used in medicinal compositions and selectively acts on cannabinoid receptors [abstract]. There is no motivation to include 50 to 99.9 wt% of an ethylenically unsaturated compound and 0.1 to 35 wt% of 2-C-5. Kaya et al. (WO 2004/103974) does not disclose a photoinitiator of formula (Ia) with R’1 as a substituted aryl. Maiti et al. (Synlett 2011, 14, 2001) discloses the synthesis of 6m. There is no motivation to include 50 to 99.9 wt% of an ethylenically unsaturated compound and 0.1 to 35 wt% of 6m. Maiti et al. (Synlett 2011, 14, 2001) does not disclose a photoinitiator of formula (Ia) with R’1 as a substituted aryl.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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