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 Objections
Claim 33 and 48-49 are objected to because of the following informalities: The claim contains multiple sentences and multiple periods. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations (See MPEP 608.01(m)). As claims 34-47 and 50-52 are dependent on claim 33, they are also objected to on this same basis due to their dependency. Appropriate correction is required.
Claim 49 is objected to because of the following informalities: The claim is missing the word ‘in’ at the line beginning ‘wherein in the formula 42, RA is synonymous with RA in general formula (1qu);’. Appropriate correction is required.
Claim 49 is objected to because of the following informalities: the claim references ‘the formulae’ in two instances towards the end of the claim. The claim sets forth various formulae, which makes it unclear which formulae are being referenced. As the described variables are in Formula 37, the antecedence of this limitation is considered to be Formula 37. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 40 and 47 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. Claim 40 and 47 depends on claim 33. Claim 40 and 47seeks to further define the scope of the structure L1. L1 as it is set forth in claim 33 sets forth a phosphorus ligand of formula 3a. The ligand of formula 3 may contain a constituent of formula 3c at one or more of the Xa moieties. The formula 12 (corresponding to 3c) sets forth that each X1 may be selected from a variety of constituents. Formula 18 seeks to further limit the scope of formula 12 and sets forth that all of the X1 are selected to be hydrogen except for one, being X2. X2 is noted as being selected from a group containing ‘[…] a phenyl group optionally substituted with one or more […] C1 to C4 alkyl groups, […]’. X1 in claim 33 may be an aryl group optionally substituted with […] halogen atoms, c1 to c6 alkyloxy groups, c1 to c6 haloalkyl groups, c1 to c6 haloalkyloxy groups, hydroxyl groups, cyano groups, and nitro groups. As the possible substituents in X1 in claim 33 does not include aryls (phenyl) substituted with C1 to C4 alkyl groups, the scope of X2 in claim 40 and 47 do not further limit the scope of the claims.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim 48 is 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 claim sets forth a method for creating a rare earth complex as set forth in Formula 23, being M3+*(HC)n*(L1)m1*(L2)m2*(XL)3-n. The method comprises the step of allowing an enol of formula (4b) or (4c), a ligand of formula L1 or L2, and a rare earth compound to react together. While the claims set forth definitions for the various constituents RA, RB1-5, and RC1-4 in terms of the compound HC, these variables are not defined in compound 4b or 4c. Compounds 4b or 4c are not clearly correlated to the definitions as set forth in HC as those definitions in HC clearly set forth that they relate only to Formula 24 or Formula 28. Thus the scope of the reactant enols claimed are unclear as they contain compounds having undefined variables.
Claims 50-52 is 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 term “low molecular weight” in claim 50 is a relative term which renders the claim indefinite. The term “low molecular weight” is not defined by the claim, 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. The use of the term makes it unclear what range of organic materials are within the scope of the claims as a standard or threshold of what is considered to be a ‘low molecular weight’ organic material is not clearly defined in the specification or claims. Claims 51-52 depend on claim 50 and are rejected on the same basis.
Allowable Subject Matter
Claim 33-52 would be allowable if rewritten or amended to overcome the objections to the claims set forth in this office action.
Claim 48 and 50-52 would be allowable if rewritten or amended to also overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The claimed compound as set forth is not anticipated or rendered obvious by the prior art. The closest prior art is considered to be the NPL documents to Fouad or Azab (IDS). Fouad teaches the creation and use of a europium or terbium quinolinone complex having a diketonato moiety (See Figure 1 and Scheme 1 of either publication). Fouad teaches that the moiety corresponding to RA is a nitro functional group. Azab teaches a similar structure wherein RA is an alkoxy group. The claimed RA is drawn to haloalkyls, aryl, and heteroaryl groups. It would not have been obvious to arbitrarily alter the compound of Fouad Or Azab such that it met the claimed structure as such a modification would require hindsight rationale.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew E. Hoban/Primary Examiner, Art Unit 1734
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