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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/493,675
`
`HAY
`
`09/12/2019
`
`Teppei HOSOKAWA
`
`14434.0714USWO
`
`7156
`
`M
`
`TEER!
`
`HAMRE, SCHUMANN, MUELLER & LARSON P.C.
`45 South Seventh Street
`Suite 2700
`MINNEAPOLIS, MN 55402-1683
`
`PAGANO, ALEXANDER R
`
`1622
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/30/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`PTOMail @hsml.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 5-9 is/are withdrawn from consideration.
`() Claim(s)__ is/are allowed.
`Claim(s) 1-4 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 3/11/2020;9/12/2019.
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210719
`
`Application No.
`Applicant(s)
`16/493,675
`HOSOKAWAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`ALEXANDER R PAGANO
`1622
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 12 September 2019.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/493,675
`Art Unit: 1622
`
`Page 2
`
`Notice of Pre-AlA 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.
`
`DETAILED ACTION
`
`Claims 1-9 of T. Hosokawaet al., US 16/493,675 (Mar. 15, 2018) are pending. Claims
`
`5-9 the non-elected species/invention stand withdrawn from consideration. Claims 1-4
`
`have been examined on the merits and stand rejected.
`
`Election/Restrictions
`
`Applicant's election of Group (I), claims 1-4, without traverse in the Reply to Restriction
`
`Requirementfiled on June 10, 2021, is acknowledged. Claims 5-9 to the non-elected
`
`invention of Groups (II) and (Ill) stand withdrawn from consideration pursuant to 37
`
`CFR 1.142(b).
`
`In view of the foregoing, the Examiner’s restriction/election requirementis
`
`made FINAL.
`
`Pursuant to the Election of Species Requirement, Applicant elected without traverse, E)-
`
`2-cyano-3-(4-((4-methoxyphenyl)(phenyl)amino)phenyl)acrylicacid as a cyanoacrylic
`
`acid derivative and triphenylmethylamine as a species oftrisubstituted methylamine.
`
`N
`
`No
`
`N
`lI
`
`ZN
`
`_OH
`
`(S wi
`
`(E)-2-cyano-3-(4-((4-
`methoxyphenyl)(phenyl)amino)phenyl)acrylic acid.
`
`triphenylmethylamine
`
`Of the elected invention of Group (I), claims 1-4 read on the elected species. The elected
`
`species were searched and determinedto befree of the art of record.
`
`

`

`Application/Control Number: 16/493,675
`Art Unit: 1622
`
`Page 3
`
`Pursuant to MPEP § 803.02, the search was extended to the orange-fluorescing species
`
`disclosed by Yamamoto discussedin detail below, which was found to anticipate instant
`
`claims 1-4. As such, the provisional election of species is given effect pursuant to 37
`
`CFR 1.142(b) and no claims are provisionally withdrawn as not reading on the elected
`
`species; however subject to rejoinder should Applicant overcome the improper Markush
`
`rejection.
`
`See, MPEP § 803.02.
`
`In view of
`
`the foregoing,
`
`the Examiner’s
`
`restriction/election requirement is made FINAL.
`
`Claim Interpretation
`
`Examination requires claim terms first be construed in terms in the broadest reasonable
`
`manner during prosecution as is reasonably allowedin an effort to establish a clear record
`
`of what applicant intends to claim See MPEP § 2111. Under a broadest reasonable
`
`interpretation, words of the claim must be given their plain meaning, unless such meaning
`
`is inconsistent with the specification. See MPEP § 2111.01.
`
`itis also appropriate to look
`
`to howthe claim term is used in the prior art, which includes orior art patents, published
`
`applications, trade publications, and dictionaries. MPEP 9 2711.01 (HB. However,
`
`specific embodiments of the specification cannot be imported into the claims, particularly
`
`wherethe subject claim limitation is broader than the embodiment. MPEP § 2111.01/(II).
`
`Instant claims 1-4 are directed to
`
`A complex crystal having a structure in which supramolecular units each
`composed of two or more types of molecules are arrayed, wherein each of the
`supramolecular units contains a cyanoacrylic acid derivative and a trisubstituted
`methylamine as the molecules’.
`
`

`

`Application/Control Number: 16/493,675
`Art Unit: 1622
`
`Page 4
`
`Interpretation of the Claim Terms “cyanoacrylic acid derivative”
`
`The instant specification defines “cyanoacrylic acid derivative” as follows:
`
`
`The cyanoacrylic acid derivative has a structure in which a substituent is bound to
`
`the carbon atom at the B position in the vinyl group of cyanoacrylic acid.
`
`Specification at page 10,
`
`lines 30-32.
`
`Thus,
`
`the specification indicates that a
`
`“cyanoacrylic acid derivative” at least has the following structural subunit:
`
`H
`
`oO
`
`Ao "“cyanoacrylic acid derivative"
`
`CN
`
`3
`
`wherein “S” is a substituent. The instant specification does not put any exclusive
`
`structural constraints on substituent “S”. Thus “S” is broadly and reasonably interpreted
`
`consistent with the specification as any chemical group. Accordingly, the claim term
`
`“cyanoacrylic acid derivative” is broadly and reasonably interpreted, consistent with the
`
`specification as limited to the above Markush grouping wherein “S” may be any chemical
`
`group.
`
`Interpretation of the Claim Terms “trisubstituted methyl amine”
`
`The claim term “trisubstituted methyl amine”is defined by the specification as follows.
`
`The trisubstituted methylamine has a structure in which the three hydrogen atoms
`bound to the methyl group of methylamine are substituted by substituents. All the
`three substituents may be identical, two of the three substituents may be identical,
`or all the three substituents may bedifferent from each other
`
`Specification at page 12, lines 10-12. The specification discloses (in an embodiment)
`
`that the trisubstituted methylamine can be a compound represented by the formula (2),
`wherein R°, R*, R° are specifically defined. Specification at page 12, [0058].
`
`

`

`Application/Control Number: 16/493,675
`Art Unit: 1622
`
`Page 5
`
`However, specific embodiments of the specification cannot be imported into the claims.
`
`MPEP § 2111.01(II). As such,
`
`the term “trisubstituted methyl amine’ is broadly and
`
`reasonably interpreted based on the plain meaning of “substituted” (replacement of
`
`hydrogen with a chemical group) in accordance with the above specification definition as
`
`the following Markush grouping.
`
`A
`
`ity "trisubstituted methyl amine"
`
`NH
`
`wherein variable “A” may be any chemical group except hydrogen.
`
`Claim Rejections - 35 USC § 112(d)
`
`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
`referenceall the limitations of the claim to which it refers.
`
`Failure to Limit a Base Claim
`
`Claim 2, dependent upon claim 1
`
`is rejected under 35 U.S.C. 112(d) as being of improper
`
`dependent form for failing to further limit the subject matter of claim 1 upon whichit
`
`depends. See MPEP 2173.05(e); 608.01(n)(II). The claim 2 recitation of “does not
`
`substantially contain the guest molecule” fails to limit base claim 1
`
`for the following
`
`reasons.
`
`It is first noted that the instant specification clearly defines "not substantially
`
`containing" means a content equalto or less than 1 mol%. Specification at page 8, [0035].
`
`And terms of degree are not necessarily indefinite where it provided enough certainty to
`
`one of skill in the art when read in the context of the invention. MPEP § 2173.05(b)(I).
`
`

`

`Application/Control Number: 16/493,675
`Art Unit: 1622
`
`Page 6
`
`However,
`
`in the instant case,
`
`failure to limit base claim 1 by the claim 2 term
`
`“substantially” is seen when the relevant independent claim 1 recitations are included
`
`within dependent claim 2, which then reads as follows:
`
`the complex crystal has, between the supramolecular units, molecular cavities in
`each of which a guest molecule for which the supramolecular unit is a host is not
`disposed, where the complex crystal does not substantially contain the guest
`molecule
`
`Thus,
`
`in view of the specification definition, dependent claim 2 literally reads that the
`
`complex crystal does not contain the guest molecule at all and simultaneously also “does
`
`not substantially contain the guest molecule” at a content of more than 1 mole%. As such,
`
`the further recitations of dependent claim 2 fail
`
`to limit base claim 1. See MPEP
`
`2173.05(e); 608.01 (n)(Il).
`
`Claim Rejections - 35 USC § 102 (AIA)
`
`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 madein 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 waseffectively filed before the
`effective filing date of the claimed invention.
`
`§ 102(a)(1) A. Yamamoto etal., “Hierarchical Construction of Fluorescent Organic Porous
`
`Structures and Guest Responsive Fluorescent Modulation by Ammonium Carboxylates”
`
`Division of Organic Crystals Newsletter, No. 29 (2011) (“Yamamoto”)
`
`Claims 1-4 are rejected pursuant to 25 U.S.C. § 102(a)1 over A. Yamamoto etal.,
`
`“Hierarchical Construction of Fluorescent Organic Porous Structures and Guest
`
`

`

`Application/Control Number: 16/493,675
`Art Unit: 1622
`
`Page 7
`
`Responsive Fluorescent Modulation by Ammonium Carboxylates” Division of Organic
`
`Crystals Newsletter, No. 29 (2011) (“Yamamoto”). An English-language translation of
`
`Yamamoto is attached as the second half of
`
`the document
`
`(“Yamamoto-Eng’).
`
`Yamamoto discloses the hierarchical assembly of supramolecular clusters of
`
`(4-
`
`diphenylamino)phenylcyanoacrylic acid (Figure 1), which exhibit a reversible change in
`
`fluorescent coloration in response to various guests. Yamamoto-Eng at Abstract.
`
`Yamamoto discloses that
`
`the hierarchical assembly of supramolecular clusters is
`
`composed of compound 1 and compound 2. Yamamoto-Eng Fig. 1.
`
`G
`JU,
`
`Z
`N~
`
`1
`
`C
`CRC
`
`2
`
`Oo
`
`OH
`
`(4-diphenylamino)phenylcyanoacrylic acid
`
`triphenylmethylamine
`
`Yamamoto discloses that compounds 1 and 2 were mixed in methanol, and the solvent
`
`was removed to give an organic salt, which was recrystallized using various organic
`
`solvents. Yamamoto-Eng at page 5 of 6 [Experiment]. The relevant portion of the
`
`English-langue translation is reproduced below.
`
`Compounds 1 and 2 were mixed in methanol, and the solvent was removed to give
`an organic salt. This salt was recrystallized using various organic solvents. In this
`paper, we report the results of our experiments. As a result of recrystallization in
`various organic solvents, crystals with fluorescence ranging from blue to orange
`were obtained. As a result of calorimetric analysis and other measurements, all of
`the crystals except the orange fluorescence crystals were inclusion crystals with
`the recrystallization solvent as_a guest. As a result of powder X-ray diffraction
`measurement, the structures can be roughly classified into six types, and four of
`them were clarified by single crystal X-ray structure analysis. All of the crystal
`structures had supramolecular clusters of carboxylic acids and amines as the core
`structure, but the accumulation pattern varied greatly depending on the guest
`species.
`
`

`

`Application/Control Number: 16/493,675
`Art Unit: 1622
`
`Page 8
`
`Yamamoto-Eng at page 5 of 6 [Experiment]. Note that the orange fluorescing crystals
`
`(A= 600 nm) is listed under Fig. 2 as “Solid-state emission spectra of inclusion crystals
`
`composed of 1 and 2”. Yamamoto-Eng at page 6 of 6 (emphasis added). Based on the
`
`foregoing disclosure, Yamamoto’s orange fluorescing crystals (i.e., those recrystallized
`
`from pentafluorobenzonitrile) meet each and every limitation of instant claim 1 because:
`
`(A) Yamamoto compound 1 meets the claim 1
`
`term “cyanoacrylic acid derivative”; (B)
`
`Yamamoto compound 2 meets the claim 1
`
`term “trisubstituted methylamine’; and (C)
`
`these crystals meet the instant claim 1 limitation of “molecular cavities in each of which a
`
`quest molecule for which the supramolecularunit is a host is not disposed”.
`
`In this regard,
`
`Yamamoto discloses that all of the crystal structures had supramolecular clusters of
`
`carboxylic acids and amines as the core structure, but the accumulation pattern varied
`
`greatly depending on the guest species. Yamamoto Fig. 2 shows that the orange
`
`fluorescence crystals were those recrystallized in pentafluorobenzonitrile.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to ALEXANDER R PAGANO whosetelephone number is (571)270-
`
`3764. The examiner can normally be reached on 8:00 AM through 5:00 PM.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using
`
`a USPTOsupplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged
`to
`use
`the USPTO Automated
`
`
`Interview Request
`
`(AIR)
`
`at
`
`If attempts to reach the examiner by telephone are unsuccessful,
`
`the examiner's
`
`supervisor, Brandon Fetterolf can be reached on (571) 272-2919. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 16/493,675
`Art Unit: 1622
`
`Page 9
`
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`
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`
`ALEXANDER R. PAGANO
`
`Examiner
`
`Art Unit 1622
`
`/ALEXANDER R PAGANO/
`Primary Examiner, Art Unit 1622
`
`