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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 09/03/2026 is acknowledged. The traversal is on the ground(s) that examination of all claims can be made without serious burden. This is not found persuasive because (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter; (c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); (d) the prior art applicable to one invention would not likely be applicable to another invention; and/or (e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-2 are vague and indefinite because in the phrases “wherein the metal comprises nickel (Ni), copper (Cu), cobalt (Co), iron (Fe), manganese (Mn), chromium (Cr), vanadium (V), dysprosium (Dy), holmium (Ho), gadolinium (Gd), neodymium (Nd), europium (Eu), cerium (Ce), thulium (Tm), ruthenium (Re), terbium (Tb), erbium (Er), ytterbium (Yb), and a salt or a mixture thereof” and “wherein M comprises nickel (Ni), copper (Cu), cobalt (Co), iron (Fe), manganese (Mn), chromium (Cr), vanadium (V), dysprosium (Dy), holmium (Ho), gadolinium (Gd), neodymium (Nd), europium (Eu), cerium (Ce), thulium (Tm), ruthenium (Re), terbium (Tb), erbium (Er), ytterbium (Yb), and salts or mixtures thereof”, the word “comprises” makes it unclear if the metal or M is a combination of all the metals and salt, or if the metal is selected from the list of metals and salt and the mixture thereof.
It is suggested to amend the claims as follow:
“wherein the metal is selected from the group consisting of nickel (Ni), copper (Cu), cobalt (Co), iron (Fe), manganese (Mn), chromium (Cr), vanadium (V), dysprosium (Dy), holmium (Ho), gadolinium (Gd), neodymium (Nd), europium (Eu), cerium (Ce), thulium (Tm), ruthenium (Re), terbium (Tb), erbium (Er), ytterbium (Yb), salt thereof and a mixture thereof”, or
“wherein the metal comprises nickel (Ni), copper (Cu), cobalt (Co), iron (Fe), manganese (Mn), chromium (Cr), vanadium (V), dysprosium (Dy), holmium (Ho), gadolinium (Gd), neodymium (Nd), europium (Eu), cerium (Ce), thulium (Tm), ruthenium (Re), terbium (Tb), erbium (Er), ytterbium (Yb), a salt thereof, or a mixture thereof”.
“wherein M is selected from the group consisting of nickel (Ni), copper (Cu), cobalt (Co), iron (Fe), manganese (Mn), chromium (Cr), vanadium (V), dysprosium (Dy), holmium (Ho), gadolinium (Gd), neodymium (Nd), europium (Eu), cerium (Ce), thulium (Tm), ruthenium (Re), terbium (Tb), erbium (Er), ytterbium (Yb), a salt thereof, and a mixture thereof”, or
“wherein M comprises nickel (Ni), copper (Cu), cobalt (Co), iron (Fe), manganese (Mn), chromium (Cr), vanadium (V), dysprosium (Dy), holmium (Ho), gadolinium (Gd), neodymium (Nd), europium (Eu), cerium (Ce), thulium (Tm), ruthenium (Re), terbium (Tb), erbium (Er), ytterbium (Yb), a salt thereof or a mixture thereof”.
In claim 1 the term "substituted" is recited for the R10 and R11 groups and is vague and indefinite because it is unclear of exactly what type of substituent moieties are used.
Claim 2 is vague and indefinite because the first two structures for the anionic ligand comprise R–(CO)-CH2-O-CH2-(CO)-R. However, the anionic ligand as claimed in claim 1 comprises a carbanion not an oxygen atom (see general formula (III)). Therefore, there is insufficient antecedent basis for this limitation in the claim.
Claim 3 is vague and indefinite because it is unclear what “C₆-DGE, C8-DGE, cyclo-C₆-DGE, and furan-C8-DGE” stand for. DGE should be spelled out for more clarity.
Note that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. Also see In re Van Geuns, 988 F.2d 1181,26 USPQ2d 1057 (Fed. Cir. 1993). Also see, In re Zetz, 13 USPQ2d 1320,1322. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEZIA RILEY whose telephone number is (571)272-0786. The examiner can normally be reached 7:30-6:00pm.
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/JEZIA RILEY/Primary Examiner, Art Unit 1681 19 September 2026
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