DETAILED ACTION
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 .
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.
Election/Restrictions
Applicants’ claim 1 amendments rendered moot the prior art rejection of record.
Examiner extended the Markush search to the full scope of instant claim 1, but did not find any prior art.
Therefore, the Election of Species Requirement as it is applied to elected Group I is withdrawn, as all Group I claims are free of the prior art.
All Group I claims have been examined on the merits.
Claims 28, 31, and 34-36 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention of Group III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 28 February 2022.
Rejoinder will occur once Applicants place Group I claims in condition for allowance.
Current Status of 17/249,457
This Office Action is responsive to the amended claims of 28 July 2025.
Claims 1-13, 18-21, 25, 37-38, 42-45, and 47-50 have been examined on the merits. Claims 1-3 and 12-13 are currently amended. Claims 4-6, 11, 25, 37-38, 42-45, and 47-50 are previously presented. Group I claims 7-10 and 18-21 are listed as withdrawn have since been rejoined and fully examined.
Priority
The effective filing date is 3 September 2018.
Response to Arguments
The Examiner acknowledges receipt of and has reviewed the Applicants’ claim amendments and Reply of 28 July 2025.
Applicants deleted “wherein for A and R5 each -C1-12alkyl” and hence rendered moot the 35 USC 112(b) indefiniteness rejection (see paragraphs 20-22 of the previous Office Action).
Applicants’ claim 1 amendments render moot the prior art rejection (see paragraphs 23-25 of previous Office Action) at least because reference ACS does not teach or anticipate a C3-8cycloalkyl at position “A” of variable R3.
Response to Amendment
Claim Objections
Claim 13 is objected to as it has an extra “and” separating two compounds that appear to be Applicant-deleted (see 2d line on page 7). Please delete this extra “and”.
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.
Claim 13 is 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.
Claim 13 recites the limitation "
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” within the top row of page 7. There is insufficient antecedent basis for this limitation in the claim.
As drafted, the compound:
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renders the metes and bounds of claim 13 undefined (hence rendering claim 13 indefinite) since the artisan is not certain where antecedent basis can be found for a C2alkenyl at position of variable “A” of instant claim 1, which Applicants narrowed (Applicants deleted C2-12alkenyl) to now only permit a C3-8cycloalkyl. Since Applicants removed C2-12alkenyl as an alternative embodiment for variable A in claim 1 to render moot prior art, they must have inadvertently overlooked removing the compound
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from claim 13.
Removing said compound from claim 13 will render moot this rejection and expedite allowance.
This rejection is properly made FINAL as Applicants amended parent independent claim 1 variable A to now only permit a C3-8cycloalkyl.
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 13 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.
Dependent claim 13, drawn to the compound: "
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” within the top row of page 7, wherein variable A is a C2alkenyl, does not properly further limit parent base claim 1, upon which it purports to depend. Applicants amended claim 1 variable A to only permit a C3-8cycloalkyl (Applicants deleted C2-12alkenyl as an alternative embodiment for variable A within claim 1 but did not remove the compound: "
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” with C2alkenyl at variable A from claim 13).
Removing said compound from claim 13 will render moot this rejection and expedite allowance.
This rejection is properly made FINAL as Applicants amended parent independent claim 1 variable A to now only permit a C3-8cycloalkyl.
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.
Conclusion
Claim 13 is not presently allowable as written.
Claims 1-12, 18-21, 25, 37-38, 42-45, and 47-50 are presently allowable as written.
There is no known prior art reference that either teaches or anticipates a compound of genus formula I according to instant claim 1.
The reference ACS discloses the compound:
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(see previously provided ACS reference), wherein: X and Y are each CR4 wherein R4 is H; R1 is -O-C2alkyl (Specification paragraph [0040] permits “alkyl” to be “optionally substituted”-here with an oxo); R2 is -C(O)-N(Ra)(Rb) wherein Ra is H and Rb is phenyl (C6aryl); R3 is –(A)n-R5 wherein variable “n” is 1 and A is C5alkenyl and R5 is H; and R6 is H.
However, ACS is no longer considered prior art given Applicants’ claim 1 amendments to variable A, which now permit variable A to only be a -C3-8cycloalkyl that must be further substituted by variable R5.
There is no known rationale (and no known prior art reference providing said rationale) that would permit modifying the teaching of ACS to arrive at the instant claim 1 invention.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625