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 .
Priority
The instant application, filed 12/26/2023, is a Continuation of PCT/JP2022/024740, filed 06/30/2021, which claims foreign priority to JP2021-109057, filed 06/30/2021. It is noted however that applicant has not filed a certified copy or translation of the foreign application to which priority is claimed as required by 37 CFR § 1.55. Therefore, applicant is not entitled to the effective filing date of 06/30/2021associated with the foreign priority document JP2021-109057.
Information Disclosure Statement
The Information Disclosure Statements filed on 03/16/2024, 07/15/2025, and 03/31/2026 are acknowledged and found to be in compliance with the provisions of 37 CFR § 1.97. Accordingly, the information disclosure statements are considered.
Restriction/Election
Applicant’s election without traverse of Group I in the reply filed on 04/23/2026 is acknowledged. Furthermore, applicant selection of Formula (1a-1) as a species of a compound of Formula (1), is also acknowledged.
In accordance with the MPEP § 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final.
As per MPEP 803.02, the Examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species (Figure 1) makes a contribution over the prior art of record. Therefore, according to MPEP 803.02: should the elected species appear allowable, the search of the Markush-type claim will be extended. The Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration. It has been determined that the entire scope claimed is not patentable.
Figure 1. Elected Species
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Figure 1. Formula (1a-1), Applicant’s elected species
Claim Status
Claims 1-11 are pending in the instant application. Claim 9 is withdrawn pursuant to 37 CFR § 1.142(b), as being drawn to a nonelected invention. Claims 1-8, 10, and 11 read on an elected invention and species and are being examined on the merits as such.
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 1-8, 10, and 11 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 Formulae (1) and (2), each of which depicts formal charges that are inconsistent with expected valence and formal charge conventions.
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In Formula (1) (right), a negative charge is assigned to the carbon atom of the isonitrile. However, the nitrogen atom of isonitrile is depicted as being neutral—violating the formal charge calculation on nitrogen, which should be depicted as being positive. The corresponding resin structure requires a compensating positive charge on nitrogen.
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In Formula (2) (right), a positive charge is assigned to the hydrogen atom of the N-formylamino cap—although hydrogen in the depicted binding arrangement would ordinarily be neutral. This, again, violates the formal charge calculation hydrogen, which should be depicted as being neutral.
Because the depicted charge distributions are chemically inconsistent, a person of ordinary skill in the art would be unable to determine with reasonable certainty, the intended molecular structures encompassed by the instant claim. Accordingly, the claim is rendered indefinite under 35 USC § 112 (b).
Claims 2-8, 10, and 11 depend on a claim rejected as being indefinite (claim 1) and do not remedy the indefiniteness of the claim on which they depends, and are therefore dually rejected as indefinite.
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 3-6 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.
Regarding claim 3, the claim recites, ”in Formula (1), a carbon atom to which the -CN group is bonded, and a carbon atom to which the R1 is bonded are asymmetric carbons.” According to Formula (1), as instantly claimed, there is no other option other than having asymmetric carbons where both CN and R1 are bonded. That is, the carbon atoms are already defined as being asymmetric in claim 1. As such, claims 3 fails to further limit claim 1, and is determined to be of improper dependent form.
Regarding claim 4, the claim recites, ”in Formula (2), a carbon atom to which the -CN group is bonded, and a carbon atom to which the R2 is bonded are asymmetric carbons.” According to Formula (2), as instantly claimed, there is no other option other than having asymmetric carbons where both CN and R2 are bonded. That is, the carbon atoms are already defined as being asymmetric in claim 1. As such, claims 4 fails to further limit claim 1, and is determined to be of improper dependent form.
Regarding claim 5, the claim recites, ”in Formula (3), a carbon atom to which the -CN group is bonded, and a carbon atom to which the R3 is bonded are asymmetric carbons.” According to Formula (3), as instantly claimed, there is no other option other than having asymmetric carbons where both CN and R3 are bonded. That is, the carbon atoms are already defined as being asymmetric in claim 1. As such, claims 3 fails to further limit claim 1, and is determined to be of improper dependent form.
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Regarding claim 6, the claim recites Formula (1a) (right), wherein a positive charge is reflected on the nitrogen atom of the isonitrile group. This fails to further limit the subject matter of claim 1, which recites Formula (1) (left), which depicts the nitrogen of the isonitrile as being neutral. As such, claims 6 fails to further limit claim 1, and is determined to be of improper dependent form.
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Further regarding claim 6, the claim recites Formula (2a) (right), wherein no charge is reflected on the hydrogen atom of the N-formylamino cap. This fails to further limit the subject matter of claim 1, which recites Formula (2) (left), which depicts the hydrogen of the N-formylamino cap as being positive. As such, claims 6 fails to further limit claim 1, and is determined to be of improper dependent form.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
Conclusion
Claims 1-8, 10, and 11 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sophia P. Hirakis whose telephone number is +1 (571) 272-0118. The examiner can normally be reached within the hours of 5:00 am to 5:00pm EST, Monday through Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam C. Milligan can be reached on +1 (571) 270-7674. The fax phone number for the organization where this application or proceeding is assigned is +1 (571) 273-8300.
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/SOPHIA P HIRAKIS/ Examiner, Art Unit 1623
/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621
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