Detailed Action
The present office action is in response to the response filed on 20 May 2026.
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 .
Status
Claims 1-6 of the pending application have been examined on the merits. Claims 7-8 are withdrawn (see “Response to Applicant Election” below).
Priority
Applicants identify the instant application, Serial #: 18/689,319, filed 05 Mar 2024, as a National Stage Entry of International Application #: PCT/JP2022/033207, filed 05 Sep 2022, which claims foreign priority from Foreign Application #: JP2021-144882, filed 06 Sep 2021.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 05 Mar 2024, 22 Jul 2025, and 04 Mar 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Response to Applicant Election
Applicant’s election without traverse of Group I, claims 1-6, in the reply filed on 20 May 2026 is acknowledged. Applicant further elected Example 1 as the species of formula I:
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No art was found after a search for the elected species. Examiner extended the Markush search to encompass the following species which reads on claims 1-6:
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Where X is perchlorate ion. Prior art was returned after a search for the species.
Claims 7-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 20 May 2026.
Claim Rejections - 35 USC § 102
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 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 –
(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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yan et al. (CCS Chem, 2021, 3:317-325; provided in IDS 03/05/24), hereinafter Yan.
The instantly elected claims are drawn to compounds of formula [I]:
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Examiner has expanded the Markush search to include the following species:
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where X is perchlorate. The species reads on claims 1-6. Claim 6 is further directed towards compounds which are photoredox catalysts.
Yan teaches compound S3 (Supplemental Information, S22):
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Compound S3 anticipates the instant claims. The ability of Compound S3 to be a photoredox catalyst is inherent and so claim 6 is also rejected by compound S3. See MPEP § 2112(I)-(II).
Conclusion
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan D. Mahlum whose telephone number is (703)756-4691. The examiner can normally be reached 8:30 AM - 5:00 PM ET, M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.D.M./Examiner, Art Unit 1625
/Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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