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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Claims 1, 103-110 and 112-120 are pending in the application.
This action is in response to applicants' amendment dated September 16, 2026. Claims 1, 110 and 119 have been amended and claims 102 and 111 have been canceled.
Response to Amendment
Applicant's arguments filed September 16, 2026 have been fully considered with the following effect:
The applicants’ amendments are sufficient to overcome the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejection, labeled paragraph 15) in the last office action, which is hereby withdrawn.
The applicants’ amendments are sufficient to overcome the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejection, labeled paragraph 16) in the last office action, which is hereby withdrawn.
With regards to the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections, labeled paragraph 17a) of the last office action, the applicant’s amendments and remarks have been fully considered but they are not persuasive.
a) The applicants’ stated that Claims 1, 110 and 119 have been amended to expressly identify the nature of each optional substituent. However, the definition of R2, R3, R4, R5, and R6 where for R2, R3, R4, R5, and R6, each substituent, if present, is independently chosen from a halogen. R2, R3, R4, R5, and R6 are always present.
Claims 1, 103-110, 112-116, 119 and 120 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 applicant regards as the invention, for reasons of record and stated above.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 6) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 8) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 18) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 19) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 20) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 21) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 22) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 23) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 24) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 25) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 26) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 27) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 28) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 29) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 30) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 31) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 32) in the last office action, which is hereby withdrawn.
With regards to the provisional nonstatutory double patenting rejection as being unpatentable over claims 83, 84 and 89-109 of copending Application No. 17/625,704 of the last office action, the applicants request that the Examiner hold the rejection over Application in 17/625,704 abeyance until there is allowable subject matter. In view of the recent patenting of this application, the rejection is no longer provisional.
Claims 1, 103-110, 112-116, 119 and 120 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,703,679, for reasons of record and stated above.
With regards to the provisional nonstatutory double patenting rejection as being unpatentable over claims 83-101 of copending Application No. 18/817,959 of the last office action, the applicants request that the Examiner hold the rejection over 18/817,959 Application in abeyance until there is allowable subject matter.
Claims 1, 103-110 and 112-116 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 83-101of copending Application No. 18/817,959, for reasons of record and stated above.
With regards to the nonstatutory double patenting rejection as being unpatentable over claims 1-21 of U.S. Patent No. 11,701,334 of the last office action, the applicants request that the Examiner hold the rejection over U.S. '334 in abeyance until there is allowable subject matter.
Claims 1, 103-105, 110 and 112-114 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,701,334, for reasons of record and stated above.
In view of the amendment dated September 16, 2026, the following new grounds of rejection apply:
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.
Claims 119 and 120 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. The amendment to claim 119 where the definition of R2, R3, R4, R5 and R6 where R2, R3, R4, R5 and R6 is amended to include the following moiety -CR1aS(O)2R1d is not described in the specification with respect to the compounds of Formula (XVIII).
Applicant is required to cancel the new matter in the reply to this Office action.
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 1, 103-110, 112-116, 119 and 120 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 pre-AIA the applicant regards as the invention. The following reasons apply:
Claims 1, 110 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the provisos that are as follows:
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1st of all R2, R3, R4, R5, and R6 are always present where they can be hydrogen, halogen…
2nd the applicants have stated that at least two substituents must be present as set forth in the first and second bullet following “at least one of” or R3 is -NR1aS(O)2R1d;
3rd with the added provisos there are several moieties within the definition of R2, R3, R4, R5, and R6 that they can never be, i.e. optionally substituted C2-6 alkenyl, optionally substituted C2-6 alkynyl, -OC(O)R1a and -OC(O)OR1a.
With this in mind it is believed that the definition of R2, R3, R4, R5, and R6 should be limited to
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Claims 106, 107 and 115 recite the limitation "optionally substituted" in the definition of R2 and R5, however, in view of the provisos at least one must be substituted with halogen. There is insufficient antecedent basis for this limitation in the claim.
Claim 119 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the provisos that are as follows:
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1st of all R2, R3, R4, R5, and R6 are always present where they can be hydrogen, halogen…
2nd the applicants have stated that at least two substituents must be present as set forth in the first and second bullet following “at least one of”;
3rd with the added provisos there are several moieties within the definition of R2, R3, R4, R5, and R6 that they can never be, i.e. optionally substituted C2-6 alkenyl, optionally substituted C2-6 alkynyl, -OC(O)R1a and -OC(O)OR1a.
With this in mind it is believed that the definition of R2, R3, R4, R5, and R6 should be limited to
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Claim 119 and claims dependent thereon are vague and indefinite in that it is not known what is meant by -CR1aS(O)2R1d in the definition of R2, R3, R4, R5 and R6 where the C atom is not valence satisfied.
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.
Claim(s) 1, 103-110 and 112-120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Registry No. 876906-98-8 where X is SO2; Y is NH; RP is H; R2 is H; R3 is OCH3; R4 is H; R5 is OCH3; and R6 is H
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Claim(s) 1, 103-110 and 112-120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Registry No. 1022766-41-1 where X is SO2; Y is NH; RP is H; R2 is H; R3 is OCH3; R4 is H; R5 is OCH3; and R6 is H
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Claim(s) 1, 103-110 and 112-120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Registry No. 1090900-47-2 where X is SO2; Y is NH; RP is H; R2 is H; R3 is -NS(O)2CH3; R4 is H; R5 is H; and R6 is H
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Claim(s) 1, 103-110 and 112-120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Registry No. 1568624-24-7 where X is SO2; Y is NH; RP is H; R2 is CH3; R3 is H; R4 is H; R5 is CF3; and R6 is H
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Claim(s) 1, 103-110 and 112-120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Registry No. 1570305-08-6 7 where X is SO2; Y is NH; RP is H; R2 is CH3; R3 is H; R4 is H; R5 is CF3; and R6 is H
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Claim(s) 1, 103-110 and 112-120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Registry No. 1573939-09-9 where X is SO2; Y is NH; RP is H; R2 is H; R3 is -NS(O)2CH3; R4 is H; R5 is H; and R6 is H
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Allowable Subject Matter
Claims 117 and 118 are allowed. None of the prior art of record nor a search in the pertinent art area teaches the two species as claimed herein.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDA L COLEMAN whose telephone number is (571)272-0665. The examiner can normally be reached Mon-Fri 10-6 (flex).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H. 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.
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/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624
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