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 .
Response to Arguments
Applicant's arguments filed on 03/06/2026 have been fully considered but they are not persuasive.
Regarding claims 1-2, Applicant respectfully submits that the claims no longer fail to comply with the enablement requirement. Also, Applicant respectfully submits that the claims are no longer indefinite to particularly point put and distinctly claim the subject matter which applicant regards as the invention. The examiner appreciates Applicant’s attempt to overcome both 112 2nd rejections. However, there are still some standing issues that were not address by the amendment to the claims as pointed out below.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-2 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 1, the limitations “identification of chemical shifts and values of integrals acquired in the hydrogen 1 (1H) NMR spectra, correlations between 1H atoms acquired in a Correlation Spectroscopy (COSY) spectra, correlation to a bond between the 1H and carbon 13 (13C) atoms acquired in Heteronuclear Single Quantum Coherence (HSQC) spectra, and correlation to more than one bond between the 1H and 13C atoms acquired in a Heteronuclear Multiple Bond Correlation (HMBC) spectra” were found non-enabled. These limitations are not in compliance with the enablement requirement at least in the amount of direction provided by the inventor, the existence of working examples and the quantity of experimentation needed to make or use the invention based on the content of the disclosure. How are the chemical shifts and values of the integrals acquired in the hydrogen 1 (1H) NMR spectra being identified? How are the 1H atoms acquired in the Correlation Spectroscopy (COSY) spectra correlated? How are the bond between the 1H and carbon 13 (13C) atoms acquired in the Heteronuclear Single Quantum Coherence (HSQC) spectra correlated? How are the more than one bond between the 1H and 13C atoms acquired in the Heteronuclear Multiple Bond Correlation (HMBC) spectra correlated? Based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation.
Claim 2 depending from claim 1 is rejected for the same reasons mentioned above.
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 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites in lines 9-10 the broad recitation “a certified standard”, and the claim also recites “sucrose 99.9%, Sigma-Aldrich” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 2 depending from claim 1 is rejected for the same reasons mentioned above.
Conclusion
No prior art was found pertinent to reject the claims.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERTO VELEZ whose telephone number is (571)272-8597. The examiner can normally be reached Mon-Fri 5:30am-3:30pm.
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/ROBERTO VELEZ/Primary Examiner, Art Unit 2858