DETAILED ACTION
Claims 1-13, submitted on November 16, 2023, are pending in the application and are rejected for the reasons set forth below. No claim is allowed.
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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. A transla-tion, however, has not been submitted, so applicant may not be entitled to rely upon it for the purpose of overcoming prior art that might be cited against the instant application under 35 U.S.C. 102 or 103.
Claim Rejections – 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the inven-tion, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the inven-tion.
Claims 12-13 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. Applicant has not presented any working examples that show possession of any hydrate, solvate, or salt of 1-DCP. WO 2001/043548 A1 by Daly et al. (cited in applicant’s IDS1) is cited as being representative of the prior art. Note that this reference does not acknowledge that any hydrates, solvates, or salts of structurally similar compounds are known in the prior art. In fact, these things appear to be chemical impossibilities. The compound 1-DCP is a hydrocar-bon, which one of skill in the art would expect to be immiscible with water. A hydrate/ solvate therefore does not appear to be chemically possible. Similarly, 1-DCP does not have any salt-forming functional groups, so it is unclear how 1-DCP could be in the form of a salt. The examiner suggests that “a hydrate thereof, a solvate thereof, a salt thereof” be deleted from claim 12.
Claims 12-13 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for the compound 1-DCP and a cyclodextrin inclusion complex, does not reasonably provide enablement for any hydrate, solvate, or salt thereof. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. The claims lack enable-ment for substantially the same reasons that they lack written description, discussed above. While applicant’s specification (see, e.g., p. 22) mentions a lithium salt, it is only as a reactive intermediate. One of skill in the art would appreciate that, because of its high reactivity, it would not have the utility referred to in instant claim 13. The examiner acknowledges that working examples of the cyclodextrin complex of instant claims 11 are described in applicant’s specifica-tion (pp. 25-28).
Claim Rejections – 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims partic-ularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 8-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particu-larly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 8, “the process” lacks antecedent basis, although the examiner presumes that it refers to “the method” of claim 1.
It is not clear how claims 9 and 10 are of different scope. Applicant is reminded that the product-by-process limitations of claim 10 are generally not accorded patentable weight. See MPEP 2113.
In claims 12-13, it is not clear how 1-DCP could be in the form of a hydrate, solvate, or salt. As noted above, the compound 1-DCP is a hydrocarbon, which one of skill in the art would expect to be immiscible with water. A hydrate/solvate therefore does not appear to be chemi-cally possible. Similarly, 1-DCP does not have any salt-forming functional groups, so it is unclear how 1-DCP could be in the form of a salt.
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.
Claim 10 is rejected under 35 U.S.C. 112(d) 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. The compound is identical whether or not it is made by the method of claim 1, so claim 10 is not further limiting of claim 9. Applicant may cancel the claim, amend the claim to place it in proper dependent form, rewrite it in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections – 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-13 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Choi et al., ACS Omega 2023, 8, 29770-78.
The chemical synthesis of Fig. 1 (p. 29772) is within the scope of the instant claims. The reference also discloses a cyclodextrin complex (p. 29773), as well as methods of using 1-DCP in the treatment of fruit trees (p. 29773), thereby meeting the limitations of claims 9-13
Choi et al. was published on August 3, 2023 and is therefore citable as prior art against the instant claims. Applicant cannot rely upon the certified copy of the foreign priority applica-tion to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English-language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Theodore R. Howell whose telephone number is (571)270-5993. The exam-iner can normally be reached Monday - Thursday, 8:00 am - 7:00 pm (Eastern Time). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L. Clark can be reached at (571)272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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THEODORE R. HOWELL
Primary Examiner
Art Unit 1628
/THEODORE R. HOWELL/Primary Examiner, Art Unit 1628
February 12, 2026
1 See the information disclosure statement (IDS) submitted on January 14, 2025.