DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
2. Applicant's election with traverse of Group I, claims 1-9, in the reply filed on 09/30/2025 is acknowledged. The traversal is on the ground(s) that “[a]ll of claims 10-16 in Groups II-VIII includes the ionic liquid formulation according to claim 1, so that Group I (claim 1) and Groups II-VIII (claims 10-16) comprise at least all of the features of as recited in claim 1 as common technical features which are special technical features” (see id pg. 6). This is not found persuasive because:
(a) Groups I and II have been restricted based on the categories of inventions according to MPEP § 806.05(f) which states “A process of making and a product made by the process can be shown to be distinct inventions if either or both of the following can be shown: “that the process as claimed is not an obvious process of making the product and the process as claimed can be used to make another materially different product.”
The invention of claims 11-15 (i.e., Groups II) is interpreted as a process of making (i.e., method for preparing an ionic liquid formulation). Furthermore, the Restriction Requirement included an example of the product as claimed can be made by a materially different process, for example, by metathesis reactions and acid-base neutralization, which are known in the art.
(b) Groups I and III-VIII have been restricted based on the categories of inventions according to MPEP § 806.05(h) which states “A product and a process of using the product can be shown to be distinct inventions if either or both of the following can be shown: The process of using as claimed can be practiced with another materially different product…”
The invention of claims 11-15 (i.e., Groups III-VIII) is interpreted as a process of use (e.g., biological tissue clearing). Furthermore, the Restriction Requirement included an example of the product as claimed being used for a materially different process, for example, in a method for producing a secondary battery, which is known in the art.
Examiner notes Applicant’s election of species with traverse and has withdrawn the requirement for the species election. The restriction requirement is still deemed proper and is therefore made FINAL.
Status of the claims
3. The claims filed on 12/17/2025, election of Group I accordingly with the response to the restriction requirement filed on 09/30/2025 and election of species accordingly with the response filed on 12/17/2025 are entered onto the record. Claims 1-16 are pending. Claims 10-16 are withdrawn. Claims 1-9 are currently examined. See attached copy of PTO-1449.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/27/2025, 05/28/2025, and 09/03/2025 comply with the provisions of 37 CFR 1.97, 1.98, and MPEP § 609. Accordingly, it has been placed in the application file and the information therein has been considered on the merits.
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 3-5, 7, and 9 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.
Regarding claims 3-5, 7, and 9, a broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, for example, claim 3 recites the broad “wherein the cation comprises a nitrogen-containing heterocyclic ring substituted with one or more aminoalkyl groups”, and the claim also recites “for example 1-(3-aminopropyl)-imidazole” which is a narrower statement of the limitation. The same is applied to the recitation of “preferably” and “for example” in claims 1-5, 7, and 9. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Examiner notes that, for prior art search purposes, the claims will be examined based on the broader limitations recited in each claim before the recitation of ‘preferably” or “for example”, e.g., claim 3 will be examined according to the recitation of “wherein, the cation comprises a nitrogen-containing heterocyclic ring substituted with one or more aminoalkyl groups” and claim 4 will be examined according to the recitation of “wherein the anion comprises an aliphatic or aromatic monocarboxylic acid, a dicarboxylic acid, a tricarboxylic acid, a monosulfonic acid or a disulfonic acid”.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Rogers et al., (US 8,802,596 B2, published Aug. 12, 2014) (“Rogers”) and in view of Wu et al. “Determination of the refractive indices of ionic liquids by ellipsometry, and their application as immersion liquids” Applied Optics. 2018 Nov; 57, 9215-9222 (“Wu”).
Regarding claims 1 and 3-6, Rogers teach “ionic liquid compositions that can be used for or in biological, pharmaceutical, nutritional, cosmetic, industrial, and commercial compositions.” (see Rogers Col. 4, lines 19-21). Specifically, Rogers teach ionic compositions comprising a cation, an anion, and optionally can be combined with a pharmaceutical active compound (see id Col 14, lines 45-47).
The cation of the ionic compositions based on the teachings of Rogers may include a nitrogen-containing heterocyclic compounds (e.g., imidazolium), where “R1” may be an alkyl group “substituted with… an amine group” (see id Col 19, lines 11- Col. 20, lines 1-22; and Col. 10, lines 53-56) which reads on instant claims 1 and 3
The anion of ionic compositions based on the teachings of Rogers may include salicylic acid (i.e., a compound containing a carboxyl group) (see id Col. 4, Lines 15-20), which reads on instant claims 1 and 4. Although instant claim 1 does not require the ionic liquid formulations to contain additional components beyond the cation and anion, the pharmaceutical active compound of ionic compositions based on the teachings of Rogers may include antipyrine (see id Col. 108, line 66), which reads on claim 1 and claims 5 and 6.
Regarding instant claim 2, Rogers teach that “the particular ratio of ions will depend on the type of ion and their respective charges, the disclosed ionic liquids can have a cation to anion ratio of 1:1, 2:1, 3:1, 4:1, 1:3, …” (see id Col. 140, lines 43-53).
Regarding instant claim 7 and 8, compositions based on the teachings of Rogers may contain the cation and anion “and also contain nonionic species... and the amount of such nonionic species is typically low (e.g., less than about 10, 9, 8, 7, 6, 5, 4, 3, 2, or 1 wt % based on the total weight of the composition” (see Col. 13, lines 36-43). Rogers further teach that the amount of water is present at less than or about 10% based on the total weight of the composition, however, Rogers is silent on the specific amounts of other components
Regarding claim 9, Rogers is silent on the refractive index of the imidazolium-based ionic liquids disclosed therein. However, in the same field Wu teach that “In principle, ionic liquids (ILs) can serve as stable and less harmful high-refractive index liquids (n > 1.6)” (see Abstract). Wu further disclose that imidazolium-based ionic liquids are “high-index ionic liquids” with refractive indices greater than n = 1.7 (see Results and Discussion, para. B Figure 2; Table 3). Therefore, based on the teaching of Wu that imidazolium-based ionic liquids can have high refractive indices, one of skill in the art would be motivated to combine the teachings of Wu with the ionic liquid compositions of Rogers, or Davis, to make ionic liquid compositions that read on the instantly claimed invention with refractive indices greater than 1.5 with a reasonable expectation of success.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing of the instant application to make an ionic liquid composition that reads on instant claims 1-9 based on the teachings of Rogers in view of David and Wu.
Conclusion
No claims are allowed in this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN JEROME FOWLER whose telephone number is (571)272-0195. The examiner can normally be reached Monday - Friday 9-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALAN J FOWLER/ Examiner, Art Unit 1691
/RENEE CLAYTOR/ Supervisory Patent Examiner, Art Unit 1691
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