DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 16, 2026 has been entered.
Response to Amendment
3. The amendments to the claims filed on March 16, 2026 have been fully considered. The amendments are sufficient to overcome the 35 USC 102 rejection over RN 1817-51-2.
4. The amendments are not sufficient to overcome the 35 USC 102 rejection over RN 53247-50-0. Below are responses to Applicant’s remarks.
The claims were previously rejected as being anticipated by RN 53247-50-0. Applicants have amended the claims, however, claim 5 still contains the prior art compound. The heading of [Formula 13b] has been deleted, however, the compound is still claimed.
This ground of rejection is withdrawn for claims 1, 5 and 6. The rejection is maintained for claim 5.
5. Notwithstanding non-allowability of the claims, the search and examination was extended. Prior art was found that anticipates the amended Markush claims. Therefore, the claims were rejected and claims to nonelected species were held withdrawn from consideration. The claims were further searched to the nonelected species shown in this office action.
6. A new ground of rejection is necessitated by the claim amendments.
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.
7. Claim 5 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 refers to compound of Formula 21, and Formula 30 to Formula 32. However, the claims are directed to far more compounds than Formula 21, and Formula 30 to Formula 32. For this reason, the scope of the claims cannot be ascertained. If Applicant’s intention is to have this claim directed only to Formula 21, and Formula 30 to Formula 32, it is suggested for Applicants to strike through the remaining structures which are not Formula 21, and Formula 30 to Formula 32.
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.
8. Claim(s) 1, 5 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 1892528-68-5 (
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). The reference has a publication date of April 18, 2016 which antedates the present claims having an effective filing date of August 21, 2020. The compound corresponds to the present claims in the following manner: X/Y=H/hal; L=triple bond; OR2=O; R1=C3 alkyl.
Conclusion
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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