DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/29/2026 has been entered.
Status of Application
The response filed 01/29/2026 has been received, entered and carefully considered. The response affects the instant application accordingly:
Claims 28, 35, 41-43 has been amended.
Claims 1, 4-5, 20-22, 27 has been cancelled.
Applicant had previously elected Group I.
Claims 28, 35-43 are pending.
Claims 28, 35-42 are present for examination at this time.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
All grounds not addressed in the action are withdrawn as a result of amendment.
New grounds of rejection are set forth in the current office action as a result of amendment.
New Grounds of Rejection and Objection
The following new grounds of rejection and objection are applied:
Claim Objections
Claim 28 is objected to because of the following informalities:
the claim recites : R⁷ is independently heterocyclyl, -OR⁷, or -NR⁷ᵃR⁷ᵇ wherein said - heterocyclyl is each independently optionally substituted with one or two substituents selected from hydroxy and -C1-6alkyl; where there is a typographical error wherein there is an additional hyphen.
Appropriate correction is required.
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 28, 35-40, 42 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.
The claims recite
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298
428
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wherein R is furanyl
but is indefinite as the newly amended formula is not the same formula Ia as previously examined and is unclear as there is no R present in the formula Ia as presented to be furanyl. It does not allow one to ascertain the metes and bounds of the claims as written. It is different from the previously presented formula Ia which was
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228
412
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. For purposes of examination to advance prosecution, the claims are treated to be
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228
412
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pending correction by Applicant.
Claims 28 and 42 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.
The claim recites : R⁶ is independently halogen or -OR⁶, wherein R⁶ᵃ is independently hydrogen, -C1-6 alkyl, or -C3-8 cycloalkyl wherein said C1-6 alkyl is each independently optionally substituted with one or two or three substituent R⁷, which is indefinite as it is unclear how the C1-6 alkyl is each independently optionally substituted with one or two or three substituent R⁷ , as R6 can either be halogen or -OR6a wherein there is only one R6a not more than one to be “each independently”. It does not allow one to ascertain the metes and bounds of the claimed invention. For purposes of examination it is treated as : R⁶ is independently halogen or -OR⁶, wherein R⁶ᵃ is independently hydrogen, -C1-6 alkyl, or -C3-8 cycloalkyl wherein said C1-6 alkyl is optionally substituted with one or two or three substituent R⁷.
Claims 28 and 42 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.
The claim recites R⁷ is independently heterocyclyl, -OR⁷, or -NR⁷ᵃR⁷ᵇ wherein said heterocyclyl is each independently optionally substituted with one or two substituents selected from hydroxy and -C1-6alkyl; which is indefinite as it is unclear how the heterocyclyl can be optionally substituted with a substituent selected from hydroxy and -C1-6alkyl, as the substituent cannot be both. For purposes of examination it is treated where: said heterocyclyl is each independently optionally substituted with one or two substituents selected from hydroxy or -C1-6alkyl.
Claims 35-40 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.
Claim 35 and its dependent claims are directed to wherein R5 is phenyl, optionally substituted with one or two halogen and further optionally substituted with one substituent R6, wherein R6 is -OR6a wherein R6a is -C1-6alkyl optionally substituted with one R7, wherein R7 is heterocyclyl, -OR7a or -NR7aR7b, wherein R7a and R7b are each independently hydrogen, -C1-6alkyl, C1-6alkoxy-C1-6alkyl-; and said heterocyclyl is optionally substituted with hydroxy or -C1-6alkyl.
This is confusing and unclear as to how when R5 is phenyl and optionally substituted with one or two halogen it can be further optionally substituted with one substituent R6 that is -OR6a (how is the halogen further optionally substituted with one substituent R6 that is -OR6a) as R6 cannot be further substituted with R6. Also are the halogens a R6 substituent?
It is also confusing as claim 35 depends from claim 28 where there is 1-3 R6’s but claim 35 also describes for 1-2 halogens with further optional substitution with R6 that is -OR6a wherein what are the other substituents for R6 recited in claim 28. Did Applicant mean for when R5 is phenyl, that the phenyl is optionally substituted with 1-3 substituents of R6 (see claim 28) where is only one R6 which is a halogen? Is that also attached to another R6? Did Applicant mean for when R5 is phenyl, that the phenyl is optionally substituted with 1-3 substituents of R6 (see claim 28) where is two R6 which are both halogen? Did Applicant mean for when R5 is phenyl, that the phenyl is optionally substituted with 1-3 substituents of R6 (see claim 28) where is two R6 substituents and one is a halogen and the other is -OR6a?
It does not allow one to ascertain the metes and bounds of the claims as written.
For purposes of examination it is treated where there are optionally 1-3 R6 substituents wherein when there is one R6 if is a halogen; where there are two R6’s it is either 2 halogens or 1 halogen and the other R6 is -OR6a; and when there are three R6 substituents - it is 2 halogens and the other R6 is -OR6a.
Response to Arguments:
Applicant asserts that claims 35-40, are now dependent from claim 28 which recites R⁵ is phenyl which can be optionally substituted with 1-3 substituents R⁶. Where there is one R⁶ substituent, R⁶ is a halogen; where there are two R⁶ substituents, R⁶ is either 2 halogens or 1 halogen and the other R⁶ is -OR⁶ᵃ; and when there are three R⁶ substituents, there is either 1 halogen with the other two R⁶ substituents being -OR⁶ᵃ or 2 halogens and the other R⁶ substituent is -OR⁶ᵃ. This is fully considered but not persuasive as the claims are subject to the 112 rejections above but also it is still unclear as written as addressed above. Particularly as the halogens recited are not tied to R6 as asserted by Applicant.
Accordingly the rejection stands.
Status of Claims with Regards to Prior Art
The claims as amended and treated as addressed above with regards to the 112 issues above appears to no longer read on the prior art of Neustadt et al. (U.S. Pat. Pub. 2002/0099061) and appears free of the prior art but are subjected to the 112 issues and objections addressed above.
Claim 41 is also free of the prior art
Conclusion
Claim 41 is allowed
Claims 28, 35-40, 42 are rejected.
Claim 28 is objected to.
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/GIGI G HUANG/Primary Examiner, Art Unit 1613
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