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
1. This application is a 371 of PCT/US2022/015536 02/07/2022; PCT/US2022/015536 has PRO 63/146,266 02/05/2021.
Claims 1-6, 114-117, 121-122, 127, 129, 146-150, 252 are pending.
Response to Restriction Election
2. Applicant’s election of group II and the species,
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in the reply filed on March 6, 2026 is acknowledged. The election was made without traverse. According to applicants’ representative claims 1-6, 114-117, 121, 122, 127 and 129 read on the elected species.
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.
3. Claims 1-6, 114-117, 121, 122, 127 and 129 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. The structures in claim 1 formula is incomplete with a wavy lines attached to nothing. As written the claims have an indefinite scope with at least 9 dangling valances (See Ex Parte Diamond (POBA 1959) 123 USPQ 167). The substructure fragment constitutes a de facto comprising claim construction and is an improper Markush since the definition is open ended. MPEP § 2173.05(h), states “A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group ‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.” Here there is no list to choose from and the claims are incomplete and unsearchable. The hydrazine is defined without structural information and is said to be “an organic compound comprising a hydrazide moiety”. For examination purposes the structure in claim 5, Formula V, has been searched as well as Formula V-A which is the starting material. As best as can be understood the reaction is that in General procedure B on page 54 of the specification:
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The elected species appears in a table on page 36 as compound ID xxCH2iPR/22 however it does not appear in any specific procedure.
Claim Rejections - 35 USC § 112
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.
4. Claims 2-6, 114-117, 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. Claims 2-6 introduce a number of variables on substructures of the formulae I and I-A of claim 1. None of these variables appear in claim 1. These include R2, R2, R3, R3’, R4, R4’, R5, R5’, R6, R6’, X1 Rx1. The species in claim 114 cannot be formed from the language of claim 1 since nothing accounts for the substituents in the individual compounds. 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.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID K O'DELL whose telephone number is (571)272-9071. The examiner can normally be reached on Monday - Friday 9:30 - 7:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached on 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID K O'DELL/Primary Examiner, Art Unit 1621
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