DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on April 22, 2026 was in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS was considered. A signed copy of form 1449 is enclosed herewith.
Status of Claims
3. Claims 2-20 are pending. Claims 2-10 (and newly added claim 19) are elected because they include the elected species. Claims 11-18 and 20 are nonelected.
Response to Amendment
4. The amendments to the claims filed on April 22, 2026 have been fully considered. The amendments are sufficient to overcome the 35 USC 102 rejection over RN 17811-72-2 which is withdrawn.
5. The amendments are not sufficient to overcome the outstanding grounds of rejection over the remaining references. Below are responses to Applicant’s amendments:
The claims were previously rejected under 35 USC 102 as being anticipated over RN 2286277-82-3 and RN 1655511-65-1 and RN 1647534-10-8 and RN 868145-09-9 and RN 867135-36-2 and RN 857947-07-0 and RN 835890-87-4 and RN 713500-93-7. Applicants have amended claim 2 (and claims dependent thereon) to include a proviso that at least two of R5-R10 are not H. However, newly added claim 19 still includes embodiments wherein R5-R10 can all be H. For this reason, the prior art compounds are still within the scope of claim 19. Moreover, RN 868145-09-9 has at least two of R5-R10 as being non hydrogen. This compound is still within the scope of claims 2, 3 and newly added claim 19.
For the reasons provided above, claims 2, 3 and 19 are rejected under 35 USC 102. This ground of rejection is made FINAL.
6. The claim amendments have necessitated a new ground of rejection under 35 USC 112 and a new ground of objection.
Claim Objections
7. Claim 4 objected to because of the following informalities: the claim does not end in a period. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
8. Claims 2-9 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims have been amended to recite the proviso that at least two of R5-R10 are not hydrogen. This new genus has not been described as an embodiment in the originally filed disclosure. Moreover, Applicants do not show a sufficient number of species of this new genus that provides support. The species that fall within this new genus are limited to two or three of R5-R10 being methyl, methoxy, fluoro, nitro, furan, pyrazole, phenyl, trifluoromethyl, amino and carboxyl. All compound have R4 of phenyl. The new genus includes R4 of phenyl or napthyl, and a large genus of substituents for R5-R10 that include generic terms such as heteroaryl , heterocycle.
For the reasons described above, the recitation of the proviso adds new matter to the claims. Appropriate correction is required.
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.
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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