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 .
Claim Status
Claims 1-10 are pending.
No claims have been amended.
No claims have been cancelled.
Thus claims 1-10 represent all claims currently under consideration.
Priority
Domestic Priority data as claimed by Applicant:
This application is a CON of PCT/CN2023/106898 (07/12/2023)
Foreign Applications:
CHINA 202210821687.X (07/13/2022)
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claim 2 is objected to because of the following informalities:
In line 2, “comprises steps of” should read “comprising the steps of”.
Claim 6 is objected to because of the following informalities:
In line 2, “comprises steps of” should read “comprising the steps of”.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 10 does not fall within at least one of the four categories of patent eligible subject matter because it is unclear whether the claim is intended to encompass a product or a process. Specifically, claim 10 recites “Use of the composite polymer film material…” The claim fails to recite any active, positive steps. MPEP § 2173.05(q)(I) states that “A "use" claim may be rejected under 35 U.S.C 101 and/or 112.
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 1-10 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.
Claim 1 recites a compound having a chemical formula [RWS3Cu2(La)]n(M)n, wherein the variable La that has the following structural formula:
PNG
media_image1.png
509
790
media_image1.png
Greyscale
The shading of the structural formula La is unclear and renders the formula difficult to interpret, and this ambiguity renders the instant claim indefinite.
Further regarding the structural formula La of claim 1, it is unclear as written whether or not the dashed bonds represent covalent bonds, and it is also unclear what atom(s) these bonds are connected to. This ambiguity renders the scope of the structure comprising the claimed chemical formula unclear and the instant claim indefinite. Fig. 1 of the present application shows that La is formed from the reaction of L (1,4-di(pyridin-4-yl)buta-1,3-diyne), [Et4N][Tp*WS3], and either Cu(ReO4) or Cu(OTf), respectively, wherein one of the alkyne moieties from the ligand L appears to react to form a 5-membered metallacycle ring with two S atoms, generating a (Z)-alkene in the process. However, it is unclear whether or not the structure represented by the dashed bonds are limited to bonding to an S atom.
Regarding claims 2-10, these dependent claims do not resolve the indefiniteness of claim 1 detailed above.
Claim 10 recites “Use of the composite polymer film material according to claim 5 in the preparation of a third-order nonlinear optical material.” This claim is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. MPEP § 2173.05(q) states that “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
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.
Claims 2-3 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.
Claims 2-3 recite the broad genus “cuprous salt” without further limiting the structure of the claimed Cu(I)-derived salt. However, the cluster compound having a chemical formula of [RWS3Cu2(La)]n(M)n of claim 1 on which the instant claim depends requires an M selected from triflate and perrhenate anion. Therefore, the genus “cuprous salt” as recited in claims 2-3 improperly broadens the scope of the Cu(I)-derived salt to include anions other than triflate and perrhenate anion, and therefore the instant claims fail to further limit the subject matter of the claim upon which they depend.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
Allowable Subject Matter
Claims 1-10 would be allowable if rewritten or amended to overcome the objections to claims 2 and 6, the rejection of claim 10 under 35 U.S.C. 101), the rejections of claims 1-10 under 35 U.S.C. 112(b)/35 U.S.C. 112 (pre-AIA ), second paragraph, and the rejections of claims 2-3 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, set forth in this Office Action.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record does not teach or suggest the claimed polyhedral tungsten/copper/sulfur cluster compound, having a chemical formula of: [RWS3Cu2(La)]n(M)n, wherein R is tris(3,5-dimethylpyrazolyl) hydroborate, tris(pyrazolyl)hydroborate, or pentamethylcyclopentadienyl; La has a structural formula of:
PNG
media_image2.png
502
810
media_image2.png
Greyscale
M is selected from triflate (OTf–) and perrhenate (ReO4–), in which when M is ReO4–, n is 4; and when M is OTf–, n is 6, as recited in independent claim 1.
The closet prior art is Bao et al. (“Flexible Vertex Engineers the Controlled Assembly of Distorted Supramolecular Tetrahedral and Octahedral Cages”; Research 2022, 2022, 9819343, pages 1-12; published 02-24-2022).
Bao teaches the preparation of tungsten/copper/sulfur cluster compounds with tetrahedral or octahedral cage structures [1]X4 (X = BF4–, ClO4–, or PF6–) or [2](SbF6–)6, respectively, from the metal sulfide synthon [Et4N][Tp*WS3] (A), 1,4-di(pyridin-4-yl)buta-1,3-diyne) (L), and [Cu(MeCN)4]X (X = BF4–, ClO4–, PF6–, or SbF6–) (page 3, Figure 2):
PNG
media_image3.png
519
717
media_image3.png
Greyscale
The polyhedral compounds of Bao are structurally similar to the recited genus of claim 1 when R is tris(3,5-dimethylpyrazolyl)hydroborate) (abbreviated as Tp*), and La is the ligated structure formed from 1,4-di(pyridin-4-yl)buta-1,3-diyne) and two S atoms of the [Tp*WS3] complex.
Bao does not teach a polyhedral tungsten/copper/sulfur cluster compound wherein M is selected from triflate (OTf–) and perrhenate (ReO4–), in which when M is ReO4–, n is 4; and when M is OTf–, n is 6, as recited in independent claim 1.
The teachings of Bao do not teach or suggest modifying the disclosed polyhedral compounds by substituting the BF4–, ClO4–, PF6–, or SbF6– counteranions with triflate (OTf–) or perrhenate (ReO4–), as required by the chemical formula of independent claim 1.
Furthermore, Zhang et al. (“Rational construction of functional molybdenum (tungsten)-copper-sulfur coordination oligomers and polymers from preformed cluster precursors”; Chem Soc. Rev. 2016, 45, 4995-5019; published 05-13-2016) teaches that the substitution of counterions in functional tungsten-copper-sulfur coordination oligomers is sometimes accompanied by re-orientation of the counterion bridging ligands with elevation of structural complexity, and Zhang does not explicitly teach the strategic implementation of triflate (OTf–) or perrhenate (ReO4–) counteranions in polyhedral tungsten/copper/sulfur cluster compounds (Title; Abstract; page 5002, Col. 1, paragraph 3 and Col. 2, paragraph 1). As such, the skilled artisan would not view the replacement of counterions such as BF4–, ClO4–, PF6–, or SbF6– with triflate (OTf–) or perrhenate (ReO4–) a method of predictably altering or improving the compounds of Bao. Thus, the prior art as a whole does not indicate that the skilled artisan would be sufficiently motivated to modify the compounds of Bao to arrive at the tungsten/copper/sulfur compounds of independent claim 1 with a reasonable expectation of success. Therefore, the claims are free from the prior art for the reasons of record and the reasons set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Derek Rhoades whose telephone number is (703)-756-5321. The Examiner can normally be reached Monday–Thursday, 7:30 am–5:00 pm EST; Friday, 7:30 am–4:00 pm 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, Scarlett Goon can be reached on 571-270-5241. 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.
/D.R./Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
Prosecution Insights