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 strategy to the compound:
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, which is a species of genus formula I from claim 1, wherein: X2 is -CR2, wherein R2 is -L1-L2-L3-L4-R15, wherein R17 and R18 are each H; L4 is absent; R15 is phenyl substituted with -NR20R21, wherein R20 and R21 are each H; X3 is -CR3; R1, R3, R4, R5 are each H; X6 is -C(=O); “n” is 1; Z is -CR9R10, wherein each of R9 and R10 are H; X7 is -CR11R12, wherein R11 and R12 are H.
This search retrieved prior art.
Therefore, per Markush search procedure, the Markush search will not be extended unnecessarily to additional species of genus formula I in this Office Action.
The Markush search extension reads on claims 1, 4, 9, 12, 23, 27, 33, 35-36, and 42-44.
Claims 13, 16-17, 19-20, and 45 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 13 June 2025.
Current Status of 17/798,552
This Office Action is responsive to the amended claims of 3 March 2026.
Claims 1, 4, 9, 12, 23, 27, 33, 35-36, and 42-44 have been examined on the merits. Claims 1, 4, 23, 27, 33, 35, and 44 are currently amended. Claims 9, 36, 42-43 are previously presented. Claims 12 are rejoined.
Priority
The effective filing date for this instant application is 12 February 2020.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 18 May 2026; and 20 March 2026, were filed after the mailing date of the Non Final Office Action on 4 September 2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Arguments
The Examiner acknowledges receipt of and has reviewed Applicants’ claim amendments and Reply of 3 March 2026.
Applicants revised claim 1 thereby rendering moot the indefiniteness rejection made within paragraphs 16-18 in the previous Office Action.
Applicants revised claim 33 thereby rendering moot the indefiniteness rejection made within paragraph 19 in the previous Office Action.
Applicants revised claim 34 thereby rendering moot the indefiniteness rejection made within paragraphs 20 in the previous Office Action.
Applicants’ revision to claim 1 render moot the prior art rejection of record (made within paragraphs 21-23 of the previous Office Action).
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 33 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.
Dependent claim 33, drawn to the sub-genus formula II, does not truly/technically further limit genus formula I of parent claim 1 (hence claim 33 is rejected under 35 USC 112(d)): the illustration of formula II provides the same embodiments as parent claim 1. R1-R5 are not further defined in claim 33; X6, X7, and R9-R10 are also not further defined within dependent claim 33.
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).
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.
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.
Claims 1, 4, 9, 12, 23, 27, 33, and 35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS (American Chemical Society. Chemical Abstract Service. RN 2230497-18-2. Entered into STN: 11 July 2018).
The prior art reference ACS teaches the compound:
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(see enclosed ACS reference), which is a species of genus formula I from claim 1, wherein: X2 is -CR2, wherein R2 is -L1-L2-L3-L4-R15, wherein R17 and R18 are each H; L4 is absent; R15 is phenyl substituted with -NR20R21, wherein R20 and R21 are each H; X3 is -CR3; R1, R3, R4, R5 are each H; X6 is -C(=O); “n” is 1; Z is -CR9R10, wherein each of R9 and R10 are H; X7 is -CR11R12, wherein R11 and R12 are H. This anticipates instant claims 1, 4, 9, 12, 23, 27, 33, and 35.
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).
Conclusion
Claims 36 and 42-44 are 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.
Claims 1, 4, 9, 12, 23, 27, 33, and 35 are not presently allowable as written.
The co-pending 18/682,878 is drawn to distinct subject matter and hence cannot be a double patent reference.
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.
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 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
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