DETAILED ACTION
Claims 1-10 are currently pending in the instant application. Claims 1-10 are rejected in this Office Action.
I. 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 .
II. Priority
The instant application is a 371 of PCT/CN2021/139810, filed on December 20, 2021 and claims benefit of Foreign Application CHINA 202011522973.3, filed on December 21, 2020.
III. Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 21, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
IV. Rejections
Claim Rejections - 35 USC § 102
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.
Claim 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kumar, et al. (Chem. Eur. J. 2016, 22, 4359-4363). The instant invention claims
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The Kumar, et al. reference teaches the use of hydrogen sulfide and carbon dioxide for preparing a carbonyl compound such as
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(See page 4359, scheme 1). The prior art teaches the following reaction
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. The above prior art’s reaction anticipates the claimed method for preparing carbonyl compounds using carbon dioxide as a carbonylation reagent wherein the method is performed in the presence of H2S.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 2 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. Regarding claim 2, the phrases "e.g.", “such as” and “i.e.” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Applicants are suggested to amend claim 2 by deleting the phrases that include “e.g.”, “such as” and “i.e.” to overcome the rejection.
Claim 3 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. Regarding claim 3, the phrases "preferably” and “e.g.” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Applicants are suggested to amend claim 3 by deleting the phrases that include “preferably” and “e.g.” to overcome the rejection.
Claim 4 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. Regarding claim 4, the phrase "such as” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Applicants are suggested to amend claim 4 by deleting the phrases that include “such as” to overcome the rejection.
Claim 5 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. Claim 5 recites the limitation "wherein the inert solvent" which is dependent on claim 1. However, there is no mention of “an inert solvent” in claim 1. Therefore, it is unclear what Applicants are referring to with the limitation “the inert solvent”. There is insufficient antecedent basis for this limitation in the claim. Applicants are suggested to amend claim 5 so that it depends on claim 2 which mentions “an optional inert solvent” instead of claim 1 to overcome the rejection.
Claims 6 and 8 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. Claims 3, 6 and 8 recite the limitation "the molar ratio of the reaction substrate" which is dependent on claim 1. However, there is no mention of “a reaction substrate” in claim 1. Therefore, it is unclear what Applicants are referring to with the limitation “the reaction substrate”. There is insufficient antecedent basis for this limitation in the claim. Applicants are suggested to amend claim 1, for example, to include a limitation that includes the phrase “a reaction substrate” so that the limitations in claims 3, 6 and 8 have antecedent basis.
Claims 7 and 9 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. Claims 7 and 9 recites the limitation "into the reactor" which is dependent on claim 1. However, there is no mention of “a reactor” in claim 1. Therefore, it is unclear what Applicants are referring to with the limitation “into the reactor”. There is insufficient antecedent basis for this limitation in the claim. Applicants are suggested to amend claim 1 by incorporating the limitation that comprises “a reactor” so that the limitations in claim 7 and 8 have antecedent basis to overcome the rejection.
Claim 10 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. Claim 10 recites the limitation "the reaction temperature" which is dependent on claim 1. However, there is no mention of “a reaction temperature” in claim 1. Therefore, it is unclear what Applicants are referring to with the limitation “the reaction temperature”. There is insufficient antecedent basis for this limitation in the claim. Applicants are suggested to amend claim 1 by incorporating the limitation that comprises “a reaction temperature” so that the limitation in claim 10 has antecedent basis to overcome the rejection.
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.
Claim 2 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 2 contains the limitation in both step (i) and (ii) “an inorganic sulfur reagent” which is dependent on claim 1. However, claim 1 has H2S as what is being used in the reaction. There are no other possible inorganic sulfur reagents mentioned being used. Therefore, claim 2 does not further limit claim 1 because the limitation “an inorganic sulfur reagent” is broader than the limitation H2S found in claim 1 as well the reaction schemes in claim 2. Applicants are suggested to amend claim 2 so that the limitation “an inorganic sulfur reagent” now reads “H2S” in both step (i) and (ii) to overcome the rejection. 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.
V. Objections
Improper Multiple Dependent Claims
Claim 4 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. Claim 4 depends on both claims 1 and 2 simultaneously. Applicants are suggested to amend claim 4 so that it depends on either claim 1 or claim 2. See MPEP § 608.01(n).
V. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Adam C Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626