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
1. Claims 1-8 are pending.
Priority
2. This application is a 371 of PCT/KR2020/007766 06/16/2020. The application also claims priority to FOREIGN APPLICATIONS: KOREA, REPUBLIC OF 10-2019-0072170 06/18/2019 and KOREA, REPUBLIC OF 10-2020-0070845 06/11/2020, which has been perfected by the filing of the certified English translations. The identity of the document is not specifically stamped on any page of the documents however certifier Mija Lee has indicated that the KR ‘170 application filed 06/18/2019 is 48 pages and the KR ‘845 application filed 6/11/2020 is 56 pages, allowing the examiner to make a distinction. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The disclosure of the invention in the priority application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application KR 10-2020-0070845, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Neither applicant supports the new definitions regarding:
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The sole mention of these R4 is on page 4 of the priority document:
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There is no support for a series of X groups. X1 to X3, X4 to X9, and X10 to X12. There is no description of a subset of adjacent R4 forming rings. No specific example of the range is shown, therefore the particular endpoint or starting point within a range has no support.
With respect to claim 5, the KR ‘170 (06/18/2019) has compound C1 to C218, however the compounds C-219 to C-290 appear only in KR ‘845 (6/11/2020). Since a claim may only have one filing date, claim 5 is afforded the date of the priority document KR ‘845 of 6/11/2020. The additional examined claims, claims 1-3, are supported only by the amendment of 01/05/2026 and the new X series language constitutes new matter.
Request for Continued Examination
3. 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 February 4, 2026 has been entered.
Restriction Election Maintained
4. Applicant’s election of group I and the species, the compound C-6,
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in the reply filed on March 21, 2025 was previously acknowledged. Claim 4 is withdrawn since it does not read on the elected species because all of the R4’s are H and do not form further fused rings in the elected species.
Response to Amendments
5. The rejection of claims 1-3 are under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is maintained. Applicant's arguments filed February 4, 2026 have been fully considered but they are not persuasive.
The rejection of claim(s) 1-3, 5 under 35 U.S.C. 102(a)(1) as being anticipated by Shentu CN 110452182 A (translation appended) is maintained. Applicant's arguments filed February 4, 2026 have been fully considered but they are not persuasive. The examiner apologizes for indicating that the certified translations would overcome the rejection over Shentu CN 110452182 A in the advisory action of January 15, 2026 which was incorrect. Since advisory actions come with zero credit for the examiner under the count system the cursory review did not allow for a detailed analysis of the priority claim as discussed above. Shentu was published November 15, 2019, and the KR ‘170 (06/18/2019) does predate Shentu, however KR ‘170 only has compounds C1 to C218, and claim 5 has additional compounds C-219 to C-290 which appear only in KR ‘845 (6/11/2020). KR ‘845 (6/11/2020) does not predate Shentu CN 110452182 A. Since a claim may only have one filing date, claim 5 is afforded the date of the priority document KR ‘845 of 6/11/2020 which is after the publication of Shentu CN 110452182 A. The examiner would suggest placing all the compounds supported by the KR ‘170 (06/18/2019), compounds C1 to C218, in a separate independent claim, while putting the compounds C-219 to C-290 in another claim. Such an independent claim drawn only to compounds C1 to C218 would overcome Shentu since it would be supported by KR ‘170 (06/18/2019).
The rejection of claim(s) 1-3, 5 under 35 U.S.C. 102(a)(2) as being anticipated by Shentu WO 2021018270 A1 (translation appended) is maintained. Applicant's arguments filed February 4, 2026 have been fully considered but they are not persuasive. The examiner apologizes for indicating that the certified translations would overcome the rejection over Shentu WO 2021018270 A1 in the advisory action of January 15, 2026 which was incorrect. Shentu is entitled to the date of August 2, 2019, based upon the filing date of the priority document, CN 110452182 A. KR ‘170 (06/18/2019) does predate Shentu, however KR ‘170 only has compounds C1 to C218, and claim 5 has additional compounds C-219 to C-290 which appear only in KR ‘845 (6/11/2020). KR ‘845 (6/11/2020) does not predate Shentu WO 2021018270 A1. Since a claim may only have one filing date, claim 5 is afforded the date of the priority document KR ‘845 of 6/11/2020 which is after the 102(a)(2) date of Shentu WO 2021018270 A1. The examiner would suggest placing all the compounds supported by the KR ‘170 (06/18/2019), compounds C1 to C218, in a separate independent claim, while putting the compounds C-219 to C-290 in another claim. Such an independent claim drawn only to compounds C1 to C218 would overcome Shentu since it would be supported by KR ‘170 (06/18/2019).
The rejection of claim(s) 1-3 under 35 U.S.C. 102(a)(1) as being anticipated by Yamamoto is withdrawn based upon the amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
6. Claims 1-3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “at least two of adjacent R4's of X1 to X3, may bel inked to each other to form a ring(s), or at least two of adjacent R4s of X4 to X6, or at least two of adjacent X10 to X12 may be linked to each other to form a ring(s)...” , there is no support for a series of X groups. The attempt is ineffective since each R4 could have been chosen from each group to form a ring and the original language does not describe that each of the two R4 groups must only be chosen from the ring to which they belong as discussed above however the introduction of this series language is new matter. There is no description of a subset of adjacent R4 forming rings. No specific example of the range is shown, therefore the particular endpoint or starting point within a range has no support.
Claim Rejections - 35 USC § 102
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 made in 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 was effectively filed before the effective filing date of the claimed invention.
7. Claim(s) 1-3, 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shentu CN 110452182 A (translation appended). Shentu on pages 8-12 teaches the compounds of the instant claims, where Y is C(R2R3) (LA-4, LA-5, LA-6) and N (LA-3), including the elected species as compound I-46 in the table on page 9 paragraph [0015], where LA is LA-3 and LB is LB-2. Many additional species of claim 5 are also disclosed including compound C-2 which is compound I-45, compound C3 which is compound I-55, compound C-4 which is compound I-53, compound C-5 which is compound I-47, compound C-11 which is compound , compound C-12 which is compound I-61, compound I-49 and so on where the combinations LA and LB in the Tables are the species of claim 5.
8. Claim(s) 1-3, 5 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shentu WO 2021018270 A1 (translation appended). Shentu on pages 3-6 teaches the compounds of the instant claims, where Y is C(R2R3) (LA-4, LA-5, LA-6) and N (LA-3), including the elected species as compound I-46 in the table on page 4, where LA is LA-3 and LB is LB-2. Many additional species of claim 5 are also disclosed including compound C-2 which is compound I-45, compound C3 which is compound I-55, compound C-4 which is compound I-53, compound C-5 which is compound I-47, compound C-11 which is compound , compound C-12 which is compound I-61, compound I-49 and so on where the combinations LA and LB in the Tables are the species of claim 5.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID K O'DELL whose telephone number is (571)272-9071. The examiner can normally be reached on Monday - Friday 9:30 - 7:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached on 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID K O'DELL/ Primary Examiner, Art Unit 1621
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