DETAILED ACTION
Claims 1 and 2 are pending in the present application.
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 .
Priority
The claim to priority as a CIP of PCT/CN2024/097901 filed on June 7, 2024, which claims benefit of CN 202311298297.X filed on October 9, 2023 is acknowledged in the present application. Benefit cannot be granted at this time as there is intervening art and the priority documents are not in English.
Information Disclosure Statement
There are currently no Information Disclosure Statements filed in the present application file.
Specification
The substitute specification filed January 14, 2025 has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because: a marked-up copy of the substitute specification has not been supplied (in addition to the clean copy).
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 and 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 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.
The claims are drawn to a chiral N-heterocyclic carbene ligand-protected copper cluster having a molecular formula of C177H166.5Cu6F36N31.5P6 and containing the ligand
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. However, the disclosure does not identify all of the components of the cluster. From the method of making the cluster disclosed in paragraph 12 of the specification, the cluster could contain the NHC ligand, copper, and acetonitrile. Assuming one NHC ligand per copper atom, the resultant molecular formula would be C162H144Cu6F36N24P6. This leads to a deficiency of C15H22.5N7.5, which is the composition of 7.5 molecules of acetonitrile. However, the claims cover any cluster that contains one ligand of the disclosed formula, contains the disclosed molecular formula, and possesses the chiral space groups disclosed. As the specification only describes one member of a large genus, there is insufficient written description of the broader genus claims 1 and 2.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 is dependent on claim 1, but describes a cluster only having 3 copper atoms instead of the 6 required by claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jia et al. (Nature Communications, 2023, Article 6877, pages 1-15 and Supplemental Information (160 pages).
Jia et al. teach the same synthesis method as described in a similar fashion as described in Examples 1 and 2 of the present specification. See pages 4-5 of the Supplemental Information. Therefore, the product of claims 1 and 2 is anticipated by Jia et al.
Conclusion
Claims 1 and 2 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph Kosack whose telephone number is (571)272-5575. The examiner can normally be reached M-F 8:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH R KOSACK/Primary Examiner, Art Unit 3991
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