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 .
Allowable Subject Matter
Claims 1-3, 5-7, 9, 11, 12, 14, 15, 17-19 and 21-24 are free of the art because the amendment of 12/15/25 overcome the closest prior art Larkin et al., as discussed in the restriction requirement and is of record in the prosecution. However, applicants have amended formula I to remove the option of R1 being a C1 to C24 hydrocarbyl or heterocarbyl. As such, the claims are novel and unobvious over the prior art.
Restriction/Election
Claims 1-3, 12, 14 and 17-19 and 21-24 are allowable. The restriction requirement between groups 1-5, as set forth in the Office action mailed on 10/16/25 , has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 10/16/25 is withdrawn between groups 1-5 because all of the groups require formula I in the methods of synthesis. Claims 6, 7, 9, 11, 12, 14, 15, 17, 18, 19 and 21 are directed to methods for preparing amides having formula V, II and II, as well as a method for solid phase synthesis are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Note that the claims are free of the art, however some are objected to for minor informalities, but the dependent claims have been indicated as allowable above, if dependent on and object to claim.
Objections
Claim 6 is objected to because of the following informalities: there is a typographical error that leaves a space between the a and s before substituent. Appropriate correction is required.
Claims 11 and 15 are objected to because of the following informalities: Each of these is an independent claim, but claim 11 begins with step B), without a step A) and claim 15 begins with step C) and D) without either steps A) or B). Appropriate correction is required.
Claim 7 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 Rejections 35 USC 112 4th Paragraph
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 5 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. Claim 5 depends from the method of claims 11, but it is a product claim. The product claim cannot contain all of the subject matter of the method of making it. If claim 5 is intended to be a product by process claim, then the process must be recited in the same claim. 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEANETTE M LIEB whose telephone number is (571)270-3490. The examiner can normally be reached M-F 10-7.
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/JEANETTE M LIEB/Primary Examiner, Art Unit 1654