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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 23 and 24 are rejected under 35 U.S.C. 101 because the claims are drawn to an “application” of the compound of formula (I) as a derivatization reagent for detecting and/or separating hydroxyl and/or amino groups. The claims have been interpreted as “use of” claims. Such claims, which do not recite any positive method steps for the application/use, results in a claim for a non-statutory category.
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 23 and 24 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 claims are drawn to an “application” of the compound of formula (I) as a derivatization reagent for detecting and/or separating hydroxyl and/or amino groups. The claims have been interpreted as “use of” claims. Such claims do not recite any positive method steps for the application/use and are therefore considered to be indefinite.
Allowable Subject Matter
The following is an examiner’s statement of reasons for the indication of allowable subject matter: claims 1-22 are drawn to a napthalenesulfonyl compound, an isotope-labeled naphthalene sulfonyl compound, a process for making the former, and application of the compounds as a derivatization reagent for detecting and/or separating hydroxyl and/or amino groups. The closet prior art, e.g., CN112010790, teaches an amino-naphthalene sulfonyl compound, i.e., dansyl chloride, and deuterated derivatives thereof; however, the prior art does not teach or suggest a compound having the structure(s) recited by the instant claims. Therefore, methods of preparing and using the claimed compound are unobvious in view of the prior art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIKARL A WITHERSPOON whose telephone number is (571)272-0649. The examiner can normally be reached M-F 9am-9pm IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIKARL A WITHERSPOON/Primary Examiner, Art Unit 1692
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