DETAILED ACTION
Status of Claims
Claims 25-30 are currently pending in the application.
Receipt is acknowledged of Applicant’s response / amendment filed on January 22, 2026 and that has been entered.
Response to Arguments
Previous Claim Rejections - 35 U.S.C. § 102
Applicant’s response and amendments / arguments [to withdrawal of the rejection / objection of claims 25-27 under U.S.C. § 102(a)(1)] have been fully considered and found persuasive with respect to the above rejection and the rejection is hereby withdrawn. However, upon further consideration of claims amendments, which necessitated the new ground of rejection and therefore, Applicants arguments are rendered moot in view of the present Office Action.
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 25-27 are rejected under 35 U.S.C. § 112, 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(s), at the time the application was filed, had possession of the claimed invention. The claims contain the subject matter of a newly introduced proviso, such as, “
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” [claim 25 (Currently Amended), page 2, lines 10-11] to overcome the rejection / objection. This subject matter is considered new matter, since the specification and the originally filed claims excluded these subject matters from the compounds as documented by original claims 25-27 and/or in the specification of pages 1-69. The amendment changes the scope of the claims to include a proviso (negative limitation) that was not previously included in the invention. This rejection can be overcome by deleting the new matter from the instant claims and/or amend the claims within the context and scope of the claims [Alternatively, 35 U.S.C. § 102(a)(1) rejection may be valid again after deletion of new matter] in order to overcome the rejection.
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.
Claim 25 is 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 recitation of
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” [claim 25 (Currently Amended), page 2, lines 10-11] renders the claim indefinite because it is unclear from the claim what the Applicant is intending to encompass with this type of external reference ‘Compound 1a or Compound 1b’ without disclosing the actual chemical names of the preferred compounds [confusion over the intended scope of a claim, see MPEP 2173.05(d)] and therefore, it is not possible to ascertain the metes and bounds of the claimed subject matter. The claim is indefinite because the claim does not itself define the invention but rely on external material and modern claim practice requires that the claims stand alone to define the invention. Ex parte Fressola, 27 USPQ2d 1608. Therefore, it is suggested to delete the above expression and/or amend the claim within the context and scope of the claim in order to overcome the rejection.
Therefore, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Golam Shameem, Ph.D. whose telephone number is (571) 272-0706. The examiner can normally be reached on Monday-Thursday from 7:30 AM - 6:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks, Ph.D. can be reached at (571) 270-7682.
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Any inquiry of a general nature or relating to the status of this application should be directed to the Group receptionist, whose telephone number is (571) 272-1600.
/GOLAM M SHAMEEM/Primary Examiner, Art Unit 1621