DETAILED ACTION
This office action is in response to the Applicant’s filing dated December 16th, 2025.
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 .
Status of Claims
Claims 1-6, 8, 14, 21, 25, 32-33, 47, 68-73, 75, 83-84 and 120-131 are pending in the instant application. Acknowledgement is made of Applicant’s remarks and amendments filed December 16th, 2025. Acknowledgement is made of applicant’s amendment of claims 1, 8, 14, 21, 25, 33, 47 and 68; cancellation of claims 93-94; and addition of new claims 120-131.
Priority
This application is a 371 of PCT/US2020/056874 filed on October 22nd, 2020; and a PRO of 62/925,657 filed on October 24th, 2019.
Objections and/or Rejections and Response to Arguments
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated (Maintained Objections and/or Rejections) or newly applied (New Objections and/or Rejections, Necessitated by Amendment or New Objections and/or Rejections, NOT Necessitated by Amendment). They constitute the complete set presently being applied to the instant application.
New Objections and/or Rejections
Necessitated by Claim Amendment
Claim Objections
Claim 1 is objected to because of the following informalities: The structure representing R3 on page 3, line 6 “
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” is objected to because on page 4, line 21 the claim further recites “R5a and R6a are absent when b is a double bond”; however, “b” is not present in R3 of claim 1. Appropriate correction is required.
Claim 84 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 120 is objected to because of the following informalities: The recitation of “-C1-6alkyl”, as shown below in claim 120 on page 15 line 13, is improper. Example:
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There should be a space in between the subscript and the next word, and should read “-C1-6 alkyl”. This type of error is repeated several times throughout the claim. Appropriate correction is required.
Claim 124 is objected to because of the following informalities: There is duplicate claim numbering present for claim 124 on page 16. Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities: the synthetic pathway shown for the process of making (e.g. newly added synthesis claims 125-131) the claimed compounds in the specification is illegible (page 67, paragraph [0259]. Below is an image showing many of the issues exemplified with arrows. Appropriate correction is required.
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Maintained Objections and/or Rejections
Claim Rejections - 35 USC § 112(b)
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 75 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 75 recites the limitation of a structural variable “M” within a chemical structure as shown below in several instances throughout the claim:
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The application as filed does not provide any definition or description of “M” in the specification or the claims. The absence of a definition of “M” renders the scope of the claim uncertain. One of ordinary skill in the art would not be able to determine, with reasonable certainty, the scope of the subject matter encompassed by the claim.
Applicant argues:
“M” is not a structural variable but a stereochemical descriptor that identifies which atropisomer of a molecule with axial chirality is claimed.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
While the specification generically states that compounds may exist as atropisomers (page 10, paragraph [0036]), it does not define or explain the “M” stereochemical designation depicted. Accordingly, it is unclear whether the compounds are limited to a particular atropisomer, encompasses all atropisomers, or whether the “M” designation is merely illustrative. As a result, the scope of the claims can’t be determined with reasonable certainty.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: In a search of the claimed compounds, composition comprising of, and process of making compounds of Formula (I), the compounds, composition comprising of, and process of making compounds of Formula (I) were found to be free of prior art.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Claim 75 is rejected.
Claims 1, 84, 120 and 124 are objected to.
Claims 2-6, 8, 14, 21, 25, 32-33, 47, 68-73, 83, 121-123 and 125-131 are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/C.L.J./Examiner, Art Unit 1691
/YIH-HORNG SHIAO/Primary Examiner, Art Unit 1691