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 .
Election/Restrictions
Applicant’s election of Species A1. B3. And C3, encompassing claims 1-2, 9, 17-18, 62-64, 70, and 76, in the reply filed on 8/25/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-2, 9, 17-18, 62-64, 70, and 76 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 1 recites the limitation of “one or more other chemical species”. It is not clear this limitation is regarded. Is “one or more other chemical species” for one or more intermediate products or any by-products generated by hydrogenation of nitrogen or for any other chemical species that is totally unrelated to hydronation of nitrogen? Without clarifying “one or more other chemical species”, one having ordinary skill in the art would not have known how to perform the claimed method. Appropriate correction/clarification is required.
Claim 63 recites the limitation of “the transfer agent donating at least one electron and at least one proton”. The claim does not specify where the at least one electron and at least one proton from the transfer agent are donated to. Without specific donating location/site, one having ordinary skill in the art would not have known how to perform the claimed method. Appropriate correction/clarification is required.
Claim 76 recites the limitation of “a starting chemical species” in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the above limitation will be interpreted as “the starting chemical species”.
Furthermore, the claim does not clearly define what “a starting chemical species” is referred. It appears from the claim language that any kind of chemical species could be used as “a starting chemical species” and the claimed invention could be performed on any kind of chemical species for photodriven hydrogenation. It should be noted that the instant specification discloses in paragraph [0207] (or paragraph [0298] of PGPUB) that certain kinds of starting chemical species can be used to perform the claimed invention. That is, the claimed invention is broader than what is disclosed. Therefore, one having ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim.
Claim 76 recites the limitation of “one or more other chemical species”. It is not clear this limitation is regarded. Is “one or more other chemical species” for one or more intermediate products or any by-products generated by hydrogenation of nitrogen or for any other chemical species that is totally unrelated to hydronation of nitrogen? Without clarifying “one or more other chemical species”, one having ordinary skill in the art would not have known how to perform the claimed method. Appropriate correction/clarification is required.
Due to the dependency to the parent claim, claims 2, 9, 17-18, 62, 64, and 70 are rejected.
Conclusion
Claims 1-2, 9, 17-18, 62-64, 70, and 76 are rejected. Claims 3-5, 11-16, and 65-66 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIUYU TAI whose telephone number is (571)270-1855. The examiner can normally be reached Mon.-Fri. 9:00-5:00.
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/XIUYU TAI/Primary Examiner, Art Unit 1795
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