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, 3, 8, 10-15 and 17-19 are pending in the application. Claims 3 and 8 are rejected. Claims 1, 14 and 17-19 are allowed. Claims 10-13 and 15 are withdrawn from further consideration.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 23rd, 2026 has been entered.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement(s) filed on May 12th, 2026
Response to Amendment / Argument
Objections and rejections made in the previous Office Action have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these objections and rejections will not be addressed.
Election/Restrictions
Claim 1 is allowed. The only remaining claims within the elected group that have not been examined are claims 3 and 8. Accordingly, these claims are examined below.
Claims 10-13 and 15 are withdrawn in view of MPEP 821.04(a), which states: “Where restriction was required between independent or distinct products, or between independent or distinct processes, and all claims directed to an elected invention are allowable, the examiner should withdraw any restriction requirement between the elected invention and any nonelected invention that depends from or otherwise requires all the limitations of an allowable claim.” Since not all claims directed to the elected invention are allowable, claims 10-13 and 15 remain withdrawn.
Claim Objections
Applicant is advised that should claim 3 be found allowable, claim 8 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Parent claim 1 limits the metal ion to zinc such that formulas of claims 3 and 8 cover identical subject matter.
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 3 and 8 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. Parent claim 1 requires two caprylhydroxamic acid moieties whereas the structures of the dependent claims only require one. Furthermore, both oxygen moieties are formally negatively charged in claim 3 whereas only half are formally negative charged in claim 1. 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, 14 and 17-19 are allowed.
The previously cited prior art (WO 01/62296 A2 by Jeng et al.) generally suggests mixtures of zinc and caprylhydroxamic acid; however, the prior art fails to establish that the instantly claimed complex of claim 1 having a 2:1 ratio would necessarily be obtained when generating the compositions of the prior art. Similarly claims 3 and 8 are not currently rejected on prior art and require a 1:1 overall neutral complex that would not be the simple result of a first instance of zinc binding caprylhydroxamic acid since an additional non-caprylhydroxamic acid anion would be present.
Conclusion
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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