CTNF 18/591,138 CTNF 79310 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Application Status 2. Claims 1-10 are pending in the application, under examination, and are the subject of this office action. Priority 02-26 AIA 3. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Applicant has not filed an English language translation of foreign priority JP Application No. 2023-126393. It is suggested that a certified translation of every foreign benefit application or Patent Cooperation Treaty (PCT) application not filed in English be submitted. See 35 U.S.C. 119(b)(3) and 372(b)(3) and 37 CFR 1.55(g)(3)(i) and 41.154(b). A showing of priority that relies on a non-English language application is prima facie insufficient to overcome an intervening reference if no certified translation of the application is on file. See 37 CFR 41.154(b) and 41.202(e). Information Disclosure Statement 4. The information disclosure statement (IDS) submitted on February 29, 2024, May 21, 2024, September 11, 2024, November 25, 2024, April 7, 2026, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner, please refer to the signed copies of Applicant’s PTO-1449 forms, attached herewith. Claim Rejections - 35 USC § 112 07-30-01 5. 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 invention, 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 invention. 6. Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In particular, support cannot be found for a carbon dioxide adsorbent comprising any fused heteroaromatic ring structure including one or more quinone groups, as instantly claimed. 7. As the Federal Circuit has stated: The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed. The MPEP does state that for a generic claim the genus can be adequately described if the disclosure presents a sufficient number of representative species that encompass the genus. MPEP 2163. If the genus has a substantial variance, the disclosure must describe a sufficient variety of species to reflect the variation within that genus. See MPEP 2163. Although the MPEP does not define what constitute a sufficient number of representative species, the courts have indicated what do not constitute a representative number of species to adequately describe a broad generic. In Gostelli , the courts determined that the disclosure of two chemical compounds within a subgenus did not describe that subgenus. In re Gostelli , 872, F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). 7. The factors considered in the Written Description requirement are: (1) level of skill and knowledge in the art, (2) partial structure, (3) physical and/or chemical properties, (4) functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and (5) the method of making the claimed invention. 8. Level of skill and knowledge in the art: The level of skill to practice the art of the instantly claimed invention is high and requires a variety of skills usually found in institutions and companies that employ highly trained and skilled scientists to carry out these tasks. 9. Partial structure; Physical and/or chemical properties; and Functional characteristics: In the case of chemical entities, Applicant's attention is further directed to Regents of the University of California v. Eli Lilly & Co. , 119 F.3d 1559 (Fed. Cir. 1997), cert. denied , 523 U.S. 1089, 118 S. Ct. 1548 (1998), which notes that an adequate written description requires a precise definition, such as by structure, formula, chemical name, or physical properties, “not a mere wish or plan for obtaining the claimed chemical invention.” While the court recognizes that, “[i]n claims involving chemical materials, generic formulae usually indicate with specificity what the generic claims encompass” ( Id. ), it is also recognized that for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim and/or the genus must be sufficiently detailed to show that applicant was in possession of the claimed invention as a whole (see Vas-Cath, Inc. v. Mahurkar , 935 F.2d 1555 (Fed. Cir. 1991)). If a genus has substantial variance, the disclosure must present a sufficient number of representative species that encompass the genus in order to adequately describe the genus (i.e., the disclosure must describe a sufficient variety of species to reflect the variation within that genus). See MPEP § 2163. Otherwise, as stated by the court in Ariad Pharmaceuticals, Inc., v. Eli Lilly and Company (Fed. Cir. 2010), “a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the Applicant has invented species sufficient to support a claim to the functionally-defined genus.” In the instant case, the instant claims are drawn to the genus comprising any fused heteroaromatic ring structure including one or more quinone groups, and employ the functional language “which is capable of adsorbing and desorbing carbon dioxide,” as well as the functional limitations recited in each of dependent claims 2-4 and 9. 10. In this case, it is evident that the genus of compounds embraced by claims 1-10 has substantial variance. Indeed, the genus is virtually without limit, embracing hundreds of millions, potentially billions, of potential fused heteroaromatic compounds including at least one quinone structure bearing little to no structural resemblance to one another what-so-ever. Yet, the instant Specification discloses only approximately 7 fused heteroaromatic compound species comprising at least one quinone group and demonstrating CO 2 adsorbent activity in Table 5, i.e., Examples 1-7 (page 50). None of the compounds disclosed in Table 5 include benzene, naphthalene, anthracene, phenanthrene (as recited in claim 4), or include a porous metal-organic framework (claim 6). Thus Applicant has not demonstrated that they were in possession of the full scope of carbon dioxide adsorbents comprising a fused heteroaromatic ring structure including at least one quinone group, as embraced by the claims. 11. The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Ariad , 598 F.3d at 1351, 94 USPQ2d at 1172; Capon v. Eshhar , 418 F.3d 1349, 1357-58, 76 USPQ2d 1078, 1083-84 (Fed. Cir. 2005). The fields of biology and chemistry are considered “unpredictable” because the complexity and unpredictability of chemical and biological interactions can make it difficult to understand the exact properties of an invention. A person of ordinary skill in the art from the specification or from the prior art cannot predict the pharmacological effects of administration of the instant formulation in subjects in regards to prevention of pain. The pharmaceutical industry is the prototypical example of a highly unpredictable field. Pfizer v. Teva Pharm ., 482 F.Supp.2d 390, 413 (D.N.J. 2007 ); 2 Chisum on Patents § 5.04. 12. Applicants have failed to provide guidance or data or evidence as to how the skilled artisan would be able to extrapolate from the disclosure to use the claimed invention. “A description of what a material does, rather than of what it is, usually does not suffice." Rochester , 358 F 3d at 923; Eli Lilly , 119 at 1568. Instead, the “disclosure must allow one skilled in the art to visualize or recognize the identity of the subject matter purportedly described.” Vas-Cath Inc. v. Mahurkar , 19 USPQ2d 1111, makes clear the "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed." (See page 1117.) The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed." (See Vas-Cath at page 1116). 13. The description requirement of the patent statue requires a description of an invention, not an indication of a result that one might achieve if one made that invention. See In re Wilder , 736, F.2d 1516, 1521,222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming rejection because the specification does "little more than outlin[e] goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate."). 14. Accordingly, it is deemed that the specification fails to provide adequate written description for the claimed invention and does not reasonably convey to one skilled in the relevant art that the inventors had possession of the entire scope of the claimed invention. 15 . Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In particular, support cannot be found for the porous metal-organic framework, as instantly claimed. 16. As the Federal Circuit has stated: The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed. The MPEP does state that for a generic claim the genus can be adequately described if the disclosure presents a sufficient number of representative species that encompass the genus. MPEP 2163. If the genus has a substantial variance, the disclosure must describe a sufficient variety of species to reflect the variation within that genus. See MPEP 2163. Although the MPEP does not define what constitute a sufficient number of representative species, the courts have indicated what do not constitute a representative number of species to adequately describe a broad generic. In Gostelli , the courts determined that the disclosure of two chemical compounds within a subgenus did not describe that subgenus. In re Gostelli , 872, F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). 17. The factors considered in the Written Description requirement are: (1) level of skill and knowledge in the art, (2) partial structure, (3) physical and/or chemical properties, (4) functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and (5) the method of making the claimed invention. 18. Level of skill and knowledge in the art: The level of skill to practice the art of the instantly claimed invention is high and requires a variety of skills usually found in institutions and companies that employ highly trained and skilled scientists to carry out these tasks. 19. Partial structure; Physical and/or chemical properties; and Functional characteristics: In the case of chemical entities, Applicant's attention is further directed to Regents of the University of California v. Eli Lilly & Co. , 119 F.3d 1559 (Fed. Cir. 1997), cert. denied , 523 U.S. 1089, 118 S. Ct. 1548 (1998), which notes that an adequate written description requires a precise definition, such as by structure, formula, chemical name, or physical properties, “not a mere wish or plan for obtaining the claimed chemical invention.” While the court recognizes that, “[i]n claims involving chemical materials, generic formulae usually indicate with specificity what the generic claims encompass” ( Id. ), it is also recognized that for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim and/or the genus must be sufficiently detailed to show that applicant was in possession of the claimed invention as a whole (see Vas-Cath, Inc. v. Mahurkar , 935 F.2d 1555 (Fed. Cir. 1991)). If a genus has substantial variance, the disclosure must present a sufficient number of representative species that encompass the genus in order to adequately describe the genus (i.e., the disclosure must describe a sufficient variety of species to reflect the variation within that genus). See MPEP § 2163. Otherwise, as stated by the court in Ariad Pharmaceuticals, Inc., v. Eli Lilly and Company (Fed. Cir. 2010), “a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. 20. In the instant case, it is evident that the carbon dioxide adsorbent compounds comprising any porous metal-organic framework, as embraced by claim 6, has substantial variance. Indeed, the genus is virtually without limit, embracing hundreds of millions, potentially billions, of potential compounds comprising a porous metal-organic framework and a fused heteroaromatic structure including at least one quinone, bearing little to no structural resemblance to one another what-so-ever. The instant Specification discloses only approximately 7 fused heteroaromatic compound species comprising at least one quinone group and demonstrating CO 2 adsorbent activity in Table 5, i.e., Examples 1-7 (page 50), wherein none of the compounds disclosed in Table 5 include a porous metal-organic framework. It is noted that Table 5, Example 7 contains a fused heteroaromatic ring comprising selenium, which is formally classified as metalloid, but not a proper metal. Thus Applicant has not demonstrated that they were in possession of a porous metal-organic framework comprising a fused heteroaromatic ring structure including at least one quinone groups (as recited in claim 6). 21. The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Ariad , 598 F.3d at 1351, 94 USPQ2d at 1172; Capon v. Eshhar , 418 F.3d 1349, 1357-58, 76 USPQ2d 1078, 1083-84 (Fed. Cir. 2005). The fields of biology and chemistry are considered “unpredictable” because the complexity and unpredictability of chemical and biological interactions can make it difficult to understand the exact properties of an invention. A person of ordinary skill in the art from the specification or from the prior art cannot predict the pharmacological effects of administration of the instant formulation in subjects in regards to prevention of pain. The pharmaceutical industry is the prototypical example of a highly unpredictable field. Pfizer v. Teva Pharm ., 482 F.Supp.2d 390, 413 (D.N.J. 2007 ); 2 Chisum on Patents § 5.04. 22. Applicants have failed to provide guidance or data or evidence as to how the skilled artisan would be able to extrapolate from the disclosure to use the claimed invention. “A description of what a material does, rather than of what it is, usually does not suffice." Rochester , 358 F 3d at 923; Eli Lilly , 119 at 1568. Instead, the “disclosure must allow one skilled in the art to visualize or recognize the identity of the subject matter purportedly described.” Vas-Cath Inc. v. Mahurkar , 19 USPQ2d 1111, makes clear the "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed." (See page 1117.) The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed." (See Vas-Cath at page 1116). 23. The description requirement of the patent statue requires a description of an invention, not an indication of a result that one might achieve if one made that invention. See In re Wilder , 736, F.2d 1516, 1521,222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming rejection because the specification does "little more than outlin[e] goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate."). 24. Accordingly, it is deemed that the specification fails to provide adequate written description for the claimed porous metal-organic framework of claim 6 and does not reasonably convey to one skilled in the relevant art that the inventors had possession of the entire scope of the claimed invention. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 25. 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 – 07-08-aia AIA (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. 07-15 AIA 26. Claim s 1-5, 7 and 9 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Wang et al ., RSC Advances (2016) . Claim 1 is drawn to a carbon dioxide adsorbent which is capable of adsorbing and desorbing carbon dioxide, and comprises a fused heteroaromatic ring structure that includes one or more quinone structures. Claim 2 is drawn to claim 1, wherein the carbon dioxide adsorbent can adsorb carbon dioxide to the quinone structure in reduction state, and the carbon dioxide adsorbent can desorb carbon dioxide from the quinone structure in oxidation state. Claim 3 is drawn to claim 1, wherein the carbon dioxide adsorbent is able to perform oxidation-reduction reaction by electrical response. Claim 4 is drawn to claim 3, wherein the fused heteroaromatic ring structure has one or more selected from the group consisting of a benzene-based heteroaromatic ring structure, a naphthalene-based heteroaromatic ring structure, an anthracene-based heteroaromatic ring structure, and a phenanthrene- based heteroaromatic ring structure. Claim 5 is drawn to claim 3, wherein the fused heteroaromatic ring structure contains one or more selected from the group consisting of nitrogen, oxygen, and sulfur. Claim 6 is drawn to claim 1, wherein the carbon dioxide adsorbent is a porous metal-organic framework. Claim 7 is drawn to claim 1, wherein the carbon dioxide adsorbent is a porous covalent-organic framework. Claim 9 is drawn to claim 1, wherein the carbon dioxide adsorbent exhibits a higher oxidation-reduction potential than that of oxygen. 27. Wang et al . teach fused heteroaromatic ring structures that include one or more quinone structures, (based on the anthraquinone and phenanthraquinone analogs of Figure 1 at page 89829), wherein the heteroatom can be nitrogen, oxygen, or sulfur: PNG media_image1.png 237 230 media_image1.png Greyscale PNG media_image2.png 258 242 media_image2.png Greyscale (see Figure 4 at page 89831). The fused heteroaromatic ring structures including one or more quinone structures are based on a covalent-organic framework (see above) as well as a metal-organic framework (e.g., the structures of Figure 7 containing Lithium): PNG media_image3.png 725 751 media_image3.png Greyscale (page 89833). 28. As to the preamble statement in claim 1 reciting that the fused heteroaromatic ring structure including one or more quinone structures is “[a] carbon dioxide adsorbent which is capable of adsorbing and desorbing carbon dioxide,” it is noted that a “mere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable.” In re Zierden , 411 F.2d 1325, 1328 (CCPA 1969). Rather, “‘a preamble is not limiting “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Catalina Marketing Int'l, Inc. v. Coolsavings.com, Inc ., 289 F.3d 801, 808 (Fed. Cir. 2002). And, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao , 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie , 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Therefore the preamble of claim 1 does not impose any limitation on the product claims, i.e., claims 1-7 and 9 are drawn to a fused heteroaromatic ring structure. 29. Claims 2, 3 and 9 are drafted in terms of the desired outcome of the use of the compound of claim 1, i.e. , “wherein the carbon dioxide can adsorb…” or “wherein the carbon dioxide adsorbent is able to… or “wherein the carbon dioxide adsorbent exhibits….” However, each “wherein” clause above is considered a latent property of the fused heteroaromatic compounds disclosed by Wang et al. and the alleged unexpected result(s) do not confer patentability. As the Federal Circuit has sensibly explained, “discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc. , 190 F.3d 1342, 1347 (Fed. Cir. 1999). Therefore, merely claiming of a new use, new function or unknown property that is inherently present within the prior art does will not in and of itself necessarily make the offered claim patentable. In re Best , 562 F.2d 1252, 1254 (CCPA 1977). 30. And, "[p]roducts of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty.") . PNG media_image4.png 18 19 media_image4.png Greyscale Claim Rejections - 35 USC § 103 07-20-aia AIA 31. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. 07-23-aia AIA 32. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-aia AIA 33. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA 34. Claim s 1-5 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Qiao et al ., Polymer Chemistry (2017), as evidenced by ChemistryLearner.com ( see webpage printout of https://www.chemistrylearner.com/keto-enol-tautomerism.html) . Claim 1 is drawn to a carbon dioxide adsorbent which is capable of adsorbing and desorbing carbon dioxide, and comprises a fused heteroaromatic ring structure that includes one or more quinone structures, wherein the carbon dioxide adsorbent is a porous covalent- organic framework ( claim 7 ), Claim 2 is drawn to claim 1, wherein the carbon dioxide adsorbent can adsorb carbon dioxide to the quinone structure in reduction state, and the carbon dioxide adsorbent can desorb carbon dioxide from the quinone structure in oxidation state. Claim 3 is drawn to claim 1, wherein the carbon dioxide adsorbent is able to perform oxidation-reduction reaction by electrical response. Claim 4 is drawn to claim 3, wherein the fused heteroaromatic ring structure has one or more selected from the group consisting of a benzene-based heteroaromatic ring structure, a naphthalene-based heteroaromatic ring structure, an anthracene-based heteroaromatic ring structure, and a phenanthrene- based heteroaromatic ring structure. Claim 5 is drawn to claim 3, wherein the fused heteroaromatic ring structure contains one or more selected from the group consisting of nitrogen, oxygen, and sulfur. Claim 9 is drawn to claim 1, wherein the carbon dioxide adsorbent exhibits a higher oxidation-reduction potential than that of oxygen. Claim 8 is drawn to claim 1, wherein the carbon dioxide adsorbent is an oligomer or a polymer including molecules containing the fused heteroaromatic ring structure as a unit structure. Claim 10 is drawn to a carbon dioxide adsorption-desorption device comprising the carbon dioxide adsorbent according to claim 1. 35. Qiao et al. teach porous organic polymers that exhibit high CO 2 adsorption capacity, comprising a fused heteroaromatic structure containing a hydroquinone group and based on a substituted anthracene monomer, wherein the heteroatom of the heteroaromatic group is sulfur: PNG media_image5.png 107 136 media_image5.png Greyscale (Figure 1 at page 6734). Qiao et al. teach a polymer comprising the unit monomer in Scheme 1, i.e., the polymer P-DTBDT (page 6734). Qiao et al . go on to suggest a device comprising said polythiophene polymer: “J. Schmidt reported a polythiophene microporous polymer with a BET area up to 1060 m2 g−1, which can be envisaged for application in organic electronic devices.” (Page 6734, left column, first paragraph). 36. Qiao et al. are silent to a fused heteroaromatic ring structure containing a quinone ring. 37. However, hydroquinone is the structural isomer of benzoquinone (aka quinone), i.e., the enol form of quinone. And, keto-enol tautomerization is a fundamental chemical concept, defined by ChemistryLearner.com as the completely reversible migration of a proton between two constitutional isomers, wherein the two forms produced by said conversion are defined as the ketone tautomer and enol tautomer. Chemical equilibrium exists between the keto form (carbonyl structure containing α-hydrogen) and the enol form (a double bond adjacent to an alcohol, -C=C-OH) of a compound (page 1, under “What is Keto-Enol Tautomerism”). In this case, Qiao et al. teach the enol form, in which the carbonyl double bond is broken, and an alkene double bond is formed at the -position of the carbon contiguous to the carbonyl. 38. And, as evidenced by ChemistryLearner.com , “[t]ypically, the keto form of the compound is more thermodynamically stable and highly favored,” (page 1, under “What is Keto-Enol Tautomerism”). ChemistryLearner.com teaches “Keto-Enol Tautomerism Examples” for cyclic compounds including a quinone: 2,3-dihydro-1,4-naphoquinone/ 1,4-dihydroxynaphthalene (see page 3). 39. Thus, one of skill in the art would have been motivated before the effective filing date of the claimed invention to prepare the keto form of the fused heterocyclic compound disclosed by Qiao et al. , having the same utility as a CO 2 adsorbent, in order to obtain a more thermodynamically stable compound with enhanced CO 2 adsorbent activity, with a reasonable expectation of success. 40. Claims 2, 3 and 9 are drafted in terms of the desired outcome of the use of the compound of claim 1, i.e. , “wherein the carbon dioxide can adsorb…” or “wherein the carbon dioxide adsorbent is able to… or “wherein the carbon dioxide adsorbent exhibits….” However, a claimed composition maybe obvious because it was suggested by, or structurally similar to, a prior art composition even though a particular benefit of the claimed composition asserted by patentee is not expressly disclosed in the prior art. It is the differences in fact in their respective properties which are determinative of nonobviousness. If the prior art composition does in fact possess a particular benefit, even though the benefit is not recognized in the prior art, Applicant's recognition of the benefit is not in itself sufficient to distinguish the claimed composition from the prior art, In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991). In this case, the redox potential and adsorbent ability/activity are considered latent properties of the fused heterocyclic monomer and polymer disclosed by Qiao et al. and the alleged unexpected results does not confer patentability. As such, claims 1-5 and 7-10 are prima facie obvious . Conclusion 12-151-07 AIA 07-97 12-51-07 41. Claim s 1-10 are pending, and all claims are rejected. No claim is presently allowed. 42. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANET L COPPINS whose telephone number is (571)272-0680. The examiner can normally be reached Monday-Friday 8:30AM-5PM EST. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JANET L COPPINS/Examiner, Art Unit 1628 /AMY L CLARK/Supervisory Patent Examiner, Art Unit 1628 Application/Control Number: 18/591,138 Page 2 Art Unit: 1628 Application/Control Number: 18/591,138 Page 3 Art Unit: 1628 Application/Control Number: 18/591,138 Page 4 Art Unit: 1628 Application/Control Number: 18/591,138 Page 5 Art Unit: 1628 Application/Control Number: 18/591,138 Page 6 Art Unit: 1628 Application/Control Number: 18/591,138 Page 7 Art Unit: 1628 Application/Control Number: 18/591,138 Page 8 Art Unit: 1628 Application/Control Number: 18/591,138 Page 9 Art Unit: 1628 Application/Control Number: 18/591,138 Page 10 Art Unit: 1628 Application/Control Number: 18/591,138 Page 11 Art Unit: 1628 Application/Control Number: 18/591,138 Page 12 Art Unit: 1628 Application/Control Number: 18/591,138 Page 13 Art Unit: 1628 Application/Control Number: 18/591,138 Page 14 Art Unit: 1628 Application/Control Number: 18/591,138 Page 15 Art Unit: 1628 Application/Control Number: 18/591,138 Page 16 Art Unit: 1628 Application/Control Number: 18/591,138 Page 17 Art Unit: 1628 Application/Control Number: 18/591,138 Page 18 Art Unit: 1628 Application/Control Number: 18/591,138 Page 19 Art Unit: 1628
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