DETAILED ACTION
Status of the Application
Claims 1-4, 6-9, and 12-16 are pending.
A preliminary amendment filed on 05/26/2026, amending claims 1-4, 6-9 and 12-15, cancelling claims 5, 10 and 11 and adding claim 16 is acknowledged.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s election with traverse of Group I, claims 1-8, drawn in part to a stationary phase comprising a base material and at least one boron cluster in a communication filed on 05/26/2026 is acknowledged.
Applicant’s traverse is on the grounds that the claims have been amended, as a result of which the allegations regarding Sykora are no longer applicable. As such, the allegation that a special technical feature is taught by the prior art in support of the restriction requirement is no longer applicable and as such, not a proper basis for maintaining this restriction requirement. This is not found persuasive as the restriction is based on the claims as presented on 05/08/2024 which was the most recent set of claims at the time of examination. Also, the applicant argues that the patent office has not established that it would pose an undue burden to examine the full scope of the claims. This is not found persuasive as search burden is not a criterion for consideration when making a restriction in a 371 application. The Examiner has demonstrated that the groups lack unity of invention, as such, restriction is proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9 and 12-15 are withdrawn from further consideration pursuant to 37 CFR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 requirement in the reply filed on 05/26/2026.
Claims 1-4, 6-8 and 16 are under consideration and are being examined herein.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119
(a)-(d). The certified copy has been filed in parent Application No. EP21206997.5, filed on
11/08/2021. The instant application is a 371 national stage application of PCT/EP2022/080959
filled on 11/07/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/08/2024 is acknowledged. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 112(a) Written Description
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 1-4, 6-8 and 16 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is directed to a stationary phase comprising a base material and at least one boron cluster, wherein the boron cluster contains only one or more elements of group 1 and 2 (s-block) and groups 13 to 18 (p-block) of the periodic table, and wherein the boron cluster is covalently bonded to the base material and has a cluster type selected from the group consisting of closo, nido, arachno, hypho, hypercloso and conjuncto. As drafted, claim 1 encompasses a broad genus of boron clusters, including multiple distinct cluster topologies (closo, nido, arachno, hypho, hypercloso and conjuncto) and any combination of elements from groups 1-2 (e.g., H, Li, Na, K, Mg, Ca, etc.) and groups 13-18 (e.g., B, C, N, O, F, Si, P, S, Cl, etc.), subject only to the limitation that the clusters is a “boron cluster”.
The specification as filed describes a stationary phase comprising a boron cluster covalently attached to a base material, with working examples in which the boron cluster is a borane-type cluster BXHY cluster (see examples 1.8.4 -1.8.10,1.8.12, and 1.8.13) and a CB11H11 cluster (see example 1.8.3) covalently attached to the base material, along with the generic statement that the “boron cluster contains only main group elements of the periodic table”. However, the specification does not provide any working examples or detailed synthetic procedures for boron clusters that have the elements C, H and B that would allow a person of ordinary skill in the art to recognize that the inventors were in possession of the full scope of the claimed genus. Claims 2-4, 6-8 and 16 depend directly or indirectly therefrom claim 1.
Accordingly, the specification does not contain an adequate written description of the full scope of the invention as claimed in claim 1.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abi-Ghaida et al. (Dalton Transactions, published 09/14/2014, IDS filed on 05/08/2024).
Claim 1 is directed to a stationary phase comprising a base material and at least one boron cluster, wherein the boron cluster contains only one or more elements of group 1 and 2 (s-block) and groups 13 to 18 (p-block) of the periodic table, and wherein the boron cluster is covalently bonded to the base material and has a cluster type selected from the group consisting of closo, nido, arachno, hypho, hypercloso and conjuncto. Claim 2 is directed to the stationary phase of claim 1, wherein the boron cluster has a cluster type of closo, nido or conjuncto. Claim 3 is directed to the stationary phase of claim 1, wherein the boron cluster contains at least one atom that is not a boron atom. Claim 4 is directed to the stationary phase according to claim 1, wherein one or more hydrogen atoms of the boron cluster are replaced by a covalently bonded substituent. Claim 6 is directed to the stationary phase according to claim 1, wherein the at least one boron cluster is bonded to the base material via a linker.
Abi-Ghaida et al. teaches synthesis of triethoxysilyated 10-vertex closo-decaborate clusters (see schemes 1-3) that can be covalently anchored onto various silica supports without prior surface modifications (see abstract). Abi-Ghaida et al. teaches that the silyated closo-decaborate clusters can be bonded with a linker (see pg. 13087, first column second paragraph). While Abi-Ghaida et al. does not explicitly teach a stationary phase, the decaborate clusters onto silica are suitable to be used as stationary phases.
Conclusion
No claim is in condition for allowance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DALTON KIEFER, PhD whose telephone number is (571)272-1235. The examiner can normally be reached M-F 7:30-5 EST.
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/DALTON EDWARD KIEFER/Examiner, Art Unit 1652
/ROBERT B MONDESI/Supervisory Patent Examiner, Art Unit 1652
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