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 1-9 and 12-32 are pending in the application. Claims 8, 9, 12-18 and 24-32 are rejected. Claims 1-7 and 19-23 are withdrawn from further consideration.
Response to Amendment / Argument
The amendment to the claims filed on March 4th, 2026 does not comply with the requirements of 37 CFR 1.121(c) because eight lines of text were added to the end of claim 8 without proper marking. Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states:
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(1) Claim listing. All of the claims presented in a claim listing shall be presented in ascending numerical order. Consecutive claims having the same status of “canceled” or “not entered” may be aggregated into one statement (e.g., Claims 1–5 (canceled)). The claim listing shall commence on a separate sheet of the amendment document and the sheet(s) that contain the text of any part of the claims shall not contain any other part of the amendment.
(2) When claim text with markings is required. All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn—currently amended.”
(3) When claim text in clean version is required. The text of all pending claims not being currently amended shall be presented in the claim listing in clean version, i.e., without any markings in the presentation of text. The presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version, except to omit markings that may have been present in the immediate prior version of the claims of the status of “withdrawn” or “previously presented.” Any claim added by amendment must be indicated with the status of “new” and presented in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.
Nevertheless, the amendment has been treated on the merits.
Objections and rejections made in the previous Office Action that do not appear below have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these objections and rejections will not be addressed.
Claim Objections
Claim 8 currently contains two periods. The first period after the definition of X1 to X8 should be deleted. Dependent claims are objected to for the same reason.
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 8, 9, 12-18 and 24-32 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 8 recites the limitation "the suitable base" in lines 5 and 6 of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 8 only previous refers to “a suitable organic base” and it is unclear if the base is required to be organic or not. Alternatively, the quoted limitation could be attempting to refer to a separate base different from the suitable organic base. It is suggested that Applicant replace “the suitable base” with “the suitable organic base”. Dependent claims 9, 12-18, and 24-32 are rejected as indefinite for the same reason since they do not obviate the issue.
Claim 28 recites the limitations "the at least compound of formula (I)", “the at least one compound according to formula (II)”, “the at least one compound or according to formula (III)” and “the mixture of at least one compound according to formula (II) and at least one compound according to formula (III)” in the fifth to last through second to last line of the claim. There is insufficient antecedent basis for these limitations in the claim. Claim 28 does not previously refer to “at least” any of the formulae recited and it is unclear how the reference should affect the calculation of the recited weight percentages, i.e. whether the weight percentage should be calculated using all amounts of compounds falling within the scope of formulae (I), (II) and (III) or whether the weight percentage need only be met by at least one permutation of compounds of formulae (I), (II) and (III) present in the solid solution.
Claim 28 is further rejected as indefinite since the limitation “the at least compound of formula (I)” appears to be missing a numerical value before “compound”.
Dependent claims 29 and 30 are rejected as indefinite for the same reasons as parent claim 28.
Claim 31 recites the limitations "the at least compound of formula (I)", “the at least one compound according to formula (II)”, “the at least one compound or according to formula (III)” and “the mixture of at least one compound according to formula (II) and at least one compound according to formula (III) in the fifth to last through second to last line of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 28 does not previously refer to “at least” any of the formulae recited and it is unclear how the reference should affect the calculation of the recited weight percentages, i.e. whether the weight percentage should be calculated using all amounts of compounds falling within the scope of formulae (I), (II) and (III) or whether the weight percentage need only be met by at least one permutation of compounds of formulae (I), (II) and (III) present in the solid solution.
Claim 31 is further rejected as indefinite since the limitation “the at least compound of formula (I)” appears to be missing a numerical value before “compound”.
Dependent claim 32 is rejected as indefinite for the same reasons as parent claim 28.
Claim Rejections - 35 USC § 112(d)
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 24-26 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. Each of these claims recites that a term of a parent claim “comprises” a list of options. MPEP 2111.03(I) notes that “comprising” is an open-ended transitional phrase. These claims only appear to be reciting that within the generic terms kneading, milling and synergist, certain options are within the scope of the terms. Reciting exemplary species within a genus; however, does not exclude additional non-recited embodiments. Accordingly, claims 24-26 do not set forth a narrowing limitation since they do not exclude non-recited options. 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. It is suggested that Applicant replace “comprises” with “is selected from”.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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