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 with traverse of group I and the species
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in the reply filed on 6/12/2026 is acknowledged. The traversal is on the ground(s) that the groups are basically the same and any prior art found would be applicable to the other presenting no search burden. This is not found persuasive because search burden is not a consideration for lack of unity.
Claims 9,53-54,58-60,71-73 and 77 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species or invention, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
Applicants' election of species wherein the compound is
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was found to be free of the prior art. As a result the search has been extended to the same compound but where the alkyne group is substituted at the para position in the phenyl ring. If prior art is then found that anticipates or renders obvious the Markush-type claim with respect to a nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration. The prior art search, however, will not be extended unnecessarily to cover all nonelected species. Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection, as by amending the Markush-type claim to exclude the species anticipated or rendered obvious by the prior art, the amended Markush-type claim will be reexamined. The ** > examination < will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during the reexamination that anticipates or renders obvious the amended Markush-type claim, the claim will be rejected and the action can be made final unless the examiner introduces a new ground of rejection that is neither necessitated by applicant' s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a). Amendments submitted after the final rejection further restricting the scope of the claim may be denied entry if they do not comply with the requirements of 37 CFR 1.116. See MPEP § 714.13.See MPEP 803.02
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 1-2,4,9-10,15-16,20-21 and 23 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. First with regard to claim 1, R1,R2 and R3 are not defined in the claim rendering the metes and bounds uncertain. Claim 15 also does not define R1. Furthermore, in claims 2 and 15, while applicants defined R2 and R3 the transitional term “or” used between Markush groups for R2 and R3 render the claims indefinite as it is unclear what R3 incorporates when R2 is selected from the Markush group, likewise it is unclear when R2 incorporates when R3 is selected from the Markush group. A simple solution to the indefiniteness would be to replace “or” with “and”, so that both R2 and R3 are properly defined in the claim. Claims 2, 4,8-10,15-16,20-21 and 23 incorporate the indefiniteness by dependency.
Lastly the recitation of "derivative " found in claim 4 when referring to the type of carboxylic acid renders the claim indefinite. The term “derivatives” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what is encompassed and excluded by the limitation "derivative”. The Merriam-Webster' s Dictionary defines “derivative” as “a chemical substance related structurally to another substance and theoretically derivable from it” ([online], retrieved on 1/25/2011, at: http://www.merriamwebster.com /dictionary/derivative. Hence, one of ordinary skill would clearly recognize that derivatives or analogues of the carboxylic acids, would read on any of those compounds having any widely varying groups that possibly substitute the compounds claimed. One of ordinary skill could not ascertain and interpret the metes and bounds of the patent protection desired as to these terms. Thus, it is unclear and indefinite as to how the “derivative” herein are encompassed thereby.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1-2,4,9-10,15-16,20-21 and 23 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Mammadova et al. “Synthesis, characterization, and theoretical investigation of optical and nonlinear optical (NLO) properties of triazene-based push–pull chromophores”, Journal of Molecular Structure, Volume 1220, 2020, 128726.
Mammadova uses the following starting material
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in making triazene push pull chrmomophores, the two R groups include
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. See entire disclosure, especially abstract and scheme 1. The general procedure for the synthesis followed the consumption of starting material based on TLC analysis, which uses UV light at 366 nm (within range of claims 10), thus reading on a system comprising a composition comprising formula A and UV light. It is inherent that when the same compound is exposed to UV light of the same wavelength it will have the same properties including the ability to form a diazonium species.
Claim(s) 1-2,4,9-10,15-16,20-21 and 23 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Amoroso, Reactive Probes for Manipulating Polyketide Synthases, and Photoreactive Probes for Strained Alkyne Click Chemistry”, Dissertation Submitted to the Graduate School of the University of Massachusetts Amherst in partial fulfillment
of the requirements for the degree of DOCTOR OF PHILOSOPHY, February 2014, cited by applicants in international search report included in application. The following rejection is based upon art which was found incidental to the search for the elected species. This is not indicative that the entire scope of the claims has been examined; however, the following art is being applied in an effort to promote compact prosecution of the case.
Amoroso discloses the following probe within the scope of the claims that forms a diazonium species when light of 365 nm (within range of claim 10) is applied as shown below:
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. See abstract and Fig. 4.8 on page 85. Note the carboxylic acid reads on R1 (claims 4 and morpholine reads on R2 and R3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES W ROGERS whose telephone number is (571)272-7838. The examiner can normally be reached 9:30-6:00 PM.
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, Michael Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES W ROGERS/Primary Examiner, Art Unit 1618
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