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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicants’ claim amendments render moot the prior art rejection of record.
The Examiner extended the Markush search to the full scope of instant claims 1 and 4-5 but did not retrieve any prior art.
Therefore, the Election of Species Requirement of 24 April 2025, is withdrawn, as all claims are free of the prior art.
All claims have been examined on the merits.
Current Status of 17/795,670
This Office Action is responsive to the amended claims of 20 November 2025.
Claims 1-11 have been examined on the merits. Claims are original. Claims 1-2, 4, and 6 are currently amended. Claims 3, 5, and 7-11 were withdrawn, but are now rejoined.
Priority
The effective filing date is 16 December 2020.
Response to Arguments
The Examiner acknowledges receipt of and has reviewed Applicants’ claim amendments and Reply of 20 November 2025.
Applicants’ revisions to “fused heterocyclic ring containing a single heteroatom” renders moot the prior art rejection of record.
Response to Amendment
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 9 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.
Previously withdrawn and now rejoined claim 9, which purports to depend on claim 5, is rejected under 35 USC 112(d). Claim 9 is drawn to “the heteroatom is at least one type of atom”, whereas parent claim 5 narrows the ring Z to “a single heteroatom”. Please make the following revision to claim 9 to render moot this rejection: -- the heteroatom is [[at least one type of atom]] selected from the group consisting of -- . Note that this also falls in line with other dependent claims, such as claim 2.
This is properly made FINAL due to Applicants’ claim amendments.
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.
Conclusion
Claim 9 is not presently allowable as written.
Claims 1-8 and 10-11 are presently allowable as written.
There is no known prior art reference that either anticipates or teaches the compound of formula 1:
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, wherein ring Z now amended is drawn to “a fused heterocyclic ring containing a single heteroatom”. For this reason, the independent claims 4-5, drawn to a method of manufacture of formula 1, are also free of the prior art.
The reference EASTWOOD (U.S. 2013/0216498 A1, referenced in IDS of 30 August 2022), discloses the compound:
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, (product of Preparation 96 on page 86 para [1377]), which is a species of fluorine-containing pyrimidine compound of a genus formula I wherein: R is methyl (hydrocarbon group with 1 carbon atom).
However, EASTWOOD is a close art and no longer a prior art reference since Applicants amended ring “Z” to only contain one single heteroatom in the fused polycyclic ring Z. However, the EASTWOOD compound has 2 heteroatoms in the polycyclic ring Z.
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 JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew D 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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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625