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 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 1-20 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.
i) The claims have not been presented according to proper US practice. Thus, in claim 1, the phrase “An organoboron compound for reductive synthesis comprising” is superfluous, confusing and open-ended. The structural formula and definitions of the variables fully defines the compound. Intended uses do not carry patentability weight and the term “comprises” implies more that what has been positively recited by the compound and definition of the variables. The phrase “A compound of Formula (I)” is suggested. The dependent claims can then follow as The compound of Formula (I) according to claim 1.”
ii) The nature of R1 and R2 is not known. The formula requires that both must be present. The term “substitution” without saying which substituents are intended is indefinite. One skilled in the art cannot say which substituents are permitted and which ones are not. Also, R1 and R2 need to be present 1-3 times according to the claims. Thus, a notation, such as, (R1)m and (R2)m, wherein m is 1, 2 or 3” is required to point out that the substituent should be present 1-3 times.
iii) The variable “n” is defined as an integer. Applicants need to narrow these to an appropriate range because an integer is infinite.
iv) The phrase at the end of the dependent claims that state “and wherein n and X as defined above” should be deleted because the definition of a variable carries over unless there is a narrower definition, the phrase is superfluous, and, “above” is improper here. See claims 2-3, 9.
v) In claim 5 is a stable free radical intended? A clarification is required.
vi) Claim 8 improperly depends from claim 1 because claim 1 is drawn to a compound and does not have process steps. Appropriate correction is required.
vii) Claim 9 lacks essential method steps and reagent to convert the compound of Formula (IV) to the compound of formula (I) according to claim 1. This renders the claims incomplete, therefore, indefinite. See also process claims 10-20 which are incomplete for the same reason. Applicants need to rewrite the process of making claims to have a complete process in the base process claim and narrow subsequent process claims as they need to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCK KIFLE whose telephone number is (571)272-0668. The examiner can normally be reached 8 AM - 6 PM, M-F.
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, Jeffrey H. Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
June 12, 2026
/BRUCK KIFLE/Primary Examiner, Art Unit 1624
Prosecution Insights