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 1-15 are under consideration
Claims 16-20 are withdrawn
Election/Restrictions
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/09/2026.
Applicant traverses on grounds of sufficiently related subject matter. This basis does not overcome the burden as established in the restriction requirement mailed 09/03/2026. Applicant may request rejoinder if appropriate under MPEP should allowable subject matter be identified; as such, the remarks are not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the abstract is shorter than 50 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
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 1-15 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.
In claim 1, regarding R, as it is written, it is unclear if R is either:
A monovalent hydrocarbon group, a divalent hydrocarbon group, or a trivalent hydrocarbon group, where each may be linear, branched, or cyclic and optionally comprising a heteroatom, or
A monovalent hydrocarbon group optionally comprising either a heteroatom or divalent hydrocarbon group, where the divalent hydrocarbon group optional comprises of a heteroatom or a trivalent hydrocarbon group, where each hydrocarbon group may be linear, branched, or cyclic.
In claim 2, regarding L1, as written, it is unclear if L1 is either:
a single bond or a C1-C20 alkylene group that is unsubstituted or substituted with deuterium, a halogen, a C1-C20 alkyl group, or a combination thereof, or
a single bond, a C1-C20 alkylene group (optionally substituted with deuterium), a halogen, a C1-C20 alkyl group, or a combination thereof, where L1 may be a monovalent alkyl and/or halogen group.
Claims 3, 4, and 10 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.
In claim 3, regarding CY1, independent claim 1 discloses CY1 comprising of 2 or more rings. The instant cycloalkylene and heterocycloalkylene groups imply monocyclic groups comprising of only 1 ring.
In claim 4, regarding CY1, independent claim 1 discloses CY1 comprising of 2 or more rings. The instant cyclohexylene group, cycloheptenylene group, and cyclooctenylene group each only contain 1 ring.
In claim 10, the organic salt represented by formula 1-2 fails to include all of the limitations of formula 1 of instant claim 1. In formula 1, if m1 is 2, each instance of L1, CY1, and a1 must be the same. However, in formula 1-2, L12 and L13 are each independently defined, CY12 and CY13 are each independently defined, and a12 and a13 are each independently defined, implying each pair may not be the same.
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.
Claim Rejections - 35 USC § 103
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 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.
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.
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.
Claims 1-2 and 4-15 are rejected under 35 U.S.C. 103 as being unpatentable over Serizawa (US20120082936A1, published 2012).
Regarding claims 1-2 and 4-15,
Serizawa teaches a salt compound (C) represented by the following general formula (i) wherein R1 represents a hydrogen atom, a linear or branched monovalent hydrocarbon group having 1 to 10 carbon atoms in which some or all of hydrogen atoms may be substituted with a fluorine atom, a hydroxyl group, an —OR group, an —OCOR group, or a —COOR group, or a monovalent hydrocarbon group having 3 to 20 carbon atoms that includes a cyclic structure or a partially cyclic structure, R represents a linear or branched monovalent hydrocarbon group having 1 to 10 carbon atoms or a monovalent hydrocarbon group having 3 to 20 carbon atoms that includes a cyclic structure or a partially cyclic structure, R2 represents a single bond or an —O—(C=O)— group, R3 represents a linear or branched monovalent hydrocarbon group having 1 to 10 carbon atoms in which some or all of hydrogen atoms may be substituted with a fluorine atom, or a monovalent hydrocarbon group having 3 to 20 carbon atoms that includes a cyclic structure or a partially cyclic structure, and X+ represents an onium cation [0010].
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Serizawa teaches X+ is at least one of an onium cation shown by a general formula (1-1) and an onium cation shown by a general formula (1-2) [0011], where R4-R8 may each individually represent a hydrogen atom or a halogen atom (such as F or I) [0011], reading on instant claims 11-14.
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Serizawa teaches examples of the monovalent hydrocarbon group having 3 to 20 carbon atoms that includes a cyclic structure or a partially cyclic structure include cycloalkyl groups such as a cyclopropyl group, a cyclobutyl group, a cyclopentyl group, a cyclohexyl group, and a cyclooctyl group, groups that include a bridged alicycle skeleton, such as a dicyclopentanyl group, a dicyclopentenyl group, a tricyclodecyl group, a tetracyclododecyl group, and an adamantyl group, further teaching examples of compound (C) with formulae (i-13), (i-20), and (i-30) [0049].
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It would have been obvious to a person of ordinary skill in the art that the cyclohexyl group of (i-30) may be substituted with another cyclic structure disclosed by Serizawa, such as an adamantyl group, resulting in the following structure, reading on instant claims 1-2, 4-10, and 15.
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Given that Serizawa discloses the compound encompasses the presently claimed organic salt, including the instant hydroxy substituted anion and halogen substituted cation, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application, to use the compound, which is both disclosed by Ebata and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US20110223537A1 teaches a similar salt compound.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Lee whose telephone number is (571)272-2261. The examiner can normally be reached M-Th 7:30-5:30 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, Keith Walker can be reached at (571) 272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Alexander N. Lee/Examiner, Art Unit 1737
Prosecution Insights