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 . Claims 20-33 are pending in this application.
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 20-33 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:
a. Claims 20 and 30 and claims dependent thereon are rejected because the phrase “an amine, a carbamate, an amide, a benzylamine, a triphenylmethylamine, or a sulphonamide protecting group” is indefinite. What is covered and what is not? How can one tell if a given protecting group is not covered by the claim? The examiner recommends that applicants recite specific protecting groups.
b. Claim 20 and claims dependent thereon are rejected because the phrase “a transitional metal catalyst” is indefinite. What is covered and what is not? How can one tell if a given transition metal catalyst is not covered by the claim? The examiner recommends that applicants recite specific transitional metal catalysts.
c. Claim 20 and claims dependent thereon are rejected because the term “solvent” is indefinite. Note that a solvent is a substance that dissolves a solute, resulting in a solution. A solvent is usually a liquid but can also be a solid, a gas, or a supercritical fluid. Solvents can also be polar or non-polar. What do applicants intend? What is covered and what is not? How can one tell if a given solvent is not covered by the claim? The examiner recommends that applicants recite specific solvents.
d. Regarding claims 21, 25, 26 and 31, the term "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention. See MPEP § 2173.05(d).
Information Disclosure Statement
4. Applicant’s Information Disclosure Statement, filed on 08/28/2024 and 10/19/2023 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kahsay Habte/
Primary Examiner, Art Unit 1624