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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/1/2026 has been entered.
Status of Claims
Claims 1,189,203 and 266-272 are pending in the instant application. Claim 203 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 1,189, and 266-272 is contained herein. The examiner has expanded the search to cover the species of formula Ia.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 10/2/2025 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 4/1/2026.
Status of Rejections
35 USC § 102(a)(2)
The 102(a)(2) rejection of claims 1,189, and 266-272 is still maintained with respect to US Patent Application 2022/0296517.
Applicant’s arguments, see Remarks, filed 4/1/2026, with respect to the Final Office Action mailed 10/2/2025, have been fully considered but are not found persuasive.
To reiterate the rejection of record; US 2022/0296517 teach the following compounds at page 179 (example 19) and at page 186 (example 184):
PNG
media_image1.png
176
552
media_image1.png
Greyscale
PNG
media_image2.png
160
576
media_image2.png
Greyscale
wherein the compounds falls within the scope of Formula Ia, wherein X = O, R1b = H or triisopropylsilyl, R3 = methyl, L1a-1c = alkyl or alkylsulfonyl, n14 = 0, and Y3 =-Nmethyl or S. Thus the claims are anticipated.
Applicants argues that the document does not serve as prior art based on the earliest priority date of August 7, 2019, while the instant claims receive the benefit of USSN 62/798,752 which has a filing date of January 30, 2019. The examiner respectfully disagrees.
Applicants are reminded that the examiner stated of record that this application is a 371 of PCT/US19/51959 and claims priority under 35 U.S.C. § 119(e) to U.S. Provisional Patent App No. 62/733,540, filed 9/19/2018 and 62/798,752 filed 1/30/2019. Benefit for the provisional applications are not accorded since subject matter disclosed within the instant application is not supported (e.g. formula I and full scope of embodiments recited therein, e.g. R1b, etc.). The claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In re Ziegler, 992 F.2d 1197, 1200, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993); Kawaiv.Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).
In the instant case despite being limited to the formula Ia; USSN 62/798,752 does not support the claimed subject matter with respect to variable L1b being selected from the cis alkene shown below:
PNG
media_image3.png
52
406
media_image3.png
Greyscale
. Thus, the document may still serve as prior art and the rejection is maintained.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
Prosecution Insights