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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/26/2026 has been entered.
Status of Claims
Claims 78-104 are pending in the instant application. Claims 80 and 85-104 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 78, 79, and 81-84 is contained herein.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 2/25/2026 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 4/26/2026.
Status of Objections and Rejections
Status of Specification
The objection to the abstract is maintained.
Applicant’s arguments, see Remarks, filed 4/26/2026, with respect to the objection set forth in the Non-Final Office Action mailed 2/25/2026, have been fully considered and the objection will be held in abeyance.
35 USC § 112 (b)
The rejection of claims 78, 79, 81, 83, and 84 is maintained.
Applicant’s arguments, see Remarks, filed 4/26/2026, with respect to the rejection set forth in the Non-Final Office Action mailed 2/25/2026, have been fully considered but are not found persuasive.
To reiterate the pertinent rejection, claim 78 recites that variables X4-12 may be selected from “Carbon”. The latter results in trivalent carbon species if variables n and m are 0 for example. What are the remaining groups to select from to complete the carbon valence if n and m are absent?
Applicants argue that one skilled in the art would simply recognize that the chemical structures embracing carbon or nitrogen atoms which are incomplete that hydrogen atoms are inherently present. Also referencing paragraph [00135] of the PCT supports the aforementioned statement. These arguments are found unpersuasive.
In reference to referring to the specification for clarification; Applicants are reminded that claims are to be interpreted in light of the specification but that does not mean that limitations from specification may be read into the claims. See Black and Decker, Inc. v Hoover Service Center, 20 USPQ 2d 1612. In reference to the argument that one skilled in the art would recognize that hydrogen atoms are intended to be present to complete the valency of carbon and nitrogen atoms is also found unpersuasive. Applicants have not provided any evidence of record to support this statement as the examiner is aware of. As written, the claimed compounds possess dangling valences as any particular substituent could be assumed to fulfill these atoms valences. The claimed compounds should not have dangling valences. Claims of the “dangling valence” type in which only the portion of the structure responsible for the activity is defined in the claim are indefinite because the claims are of indeterminate in scope and generally broader than any possible supporting disclosure. Ex parte Diamond, 123 USPQ 167 (POBA 1959). Thus, the rejection is maintained. Correction is required.
New Objections and Rejections
Claim Objections
Claim 82 is objected to for the following informality:
The starting preamble of claim 82 should read “selected from the group consisting of” instead of “selected from a group consisting of” for consistency. Correction is required.
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 78, 79, 81, and 83 are rejected under 35 U.S.C. 102(a)(1) as being anticipated over compounds with registry numbers
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20
270
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and
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18
255
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in CAS STNext.
CAS STNext teach the following compounds in registry:
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550
1130
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618
1000
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wherein the compounds have the limitation: variables X8-12 forms an alkyl substituted pyrimidine ring, X2,3 along with remaining variables and ring form an unsubstituted benzoxazole, and L1 is optionally alkyl substituted methylene. Thus the claims are anticipated. In regard to language in claim 83, note that the limitations do not make the claims patentable when the prior art teaches all of the claimed structural limitations, see In re Schreiber, 128F.3d 1473, 1477 (Fed. Cir. 1997) and Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003), “a statement of intended use cannot distinguish over a prior art apparatus that discloses all the recited limitations and is capable of performing the recited function,” see In re Schreiber, 128F.3d 1473, 1477 (Fed. Cir. 1997) and Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003)
Conclusion
Claims 78, 79, 81, and 83-84 are rejected. Claim 82 is objected to. Note that since there has been an election of species requirement and art cited of record (searched to cover benzoxazole species); the full scope of claim 82 has not been searched. See MPEP 803.02.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
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