DETAILED ACTION
Claims 1, 41, and 42 are currently pending in the instant application. Claims 1 and 42 are allowed. Claim 41 is objected and rejected.
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 .
Election/Restrictions
Applicant’s election without traverse of group I and the species:
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in the reply filed on 17 June 2025 has been previously acknowledged.
According to MPEP 803.02, the examiner has determined whether the elected species is allowable. Applicants’ elected species appears allowable. Therefore, the search and examination has been extended to the compounds of claim 1 in their entirety which are allowable.
Claims 1, 41 and 42 have been examined to the extent that they are readable on the elected embodiment, the elected species and the above mentioned compounds.
Response to Amendment and arguments
Applicant's amendment and arguments filed 23 December 2025 have been fully considered and entered into the instant application. Applicant’s amendment has overcome the objection to claim 1. Claim 8 has been canceled. The objection to claim 41 is overcome by applicant’s amendment. The provisional nonstatutory double patenting rejection is overcome by applicant’s amendment to claims 1 and 41 and the cancelation of claim 4. The amendment to claim 1 and the cancelation of claim 4 has overcome the 35 USC 102(a)(1) rejection as being anticipated by WO 2018/093818. The amendment to claim 41 has overcome the 35 USC 103 rejection as being unpatentable over WO 2018/093818.
Claim Objections
Claim 41 is objected to because of the following informalities: The structures of compounds 1-78, 87, and 89-93 are unclear and sometimes illegible. See for example compound 22:
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. Compare also to compounds 98-104, 118-127, and 135-139 which are clear and legible, see for example compound 139:
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. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 41 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 1 defines R1N multiple ways, which all include a nitrogen atom in the definitions, see for example, page 2 of the claim set:
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, however, claim 41, which depends upon claim 1 claims multiple compounds that have R1N defined which does not include a nitrogen atom in R1N. See for example, compounds 89-93 and 98-101. Compound 89 is:
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, which does not have a nitrogen in the position equivalent to R1N and the compound 98:
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, which does not have a nitrogen in the position equivalent to R1N.
. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. It is suggested that applicant amend claim 41 to delete compound which are not within instant claim 1.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L ANDERSON whose telephone number is (571)272-0696. The examiner can normally be reached Monday-Friday from 6am-2pm.
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, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626 ____________________ 23 March 2026
Rebecca Anderson
Primary Examiner
Art Unit 1626, Group 1620
Technology Center 1600
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