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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/12/2026 has been entered.
Claims 1, 3-9, 11-12, and 16 are pending in this application.
Withdrawn ground of rejection
The outstanding nonstatutory double patenting ground of rejection as being unpatentable over claims of copending Application No. 18/009,681 (reference application) in view of Wada et al. (US 5,154,750) and Takabe et al. (US 5,403,816) is withdrawn in view of the amendment to the claims filed on 6/12/2026. Amendment to claim 1, which limits R3 to H, F, Cl, or C1-4 alkyl overcomes this ground of rejection, because the corresponding substituent in said reference application requires a ring-containing moiety.
35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-9, 11-12, and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
(1) In claim 1, Y is defined to form “(II-a) to (II-aa).” However, structures for (II-q), (II-r), (II-s), and (II-t) are missing.
Claims 6 and 11 have the same indefiniteness issue of reciting Y as “(II-a) to (II-aa)” but (II-q), (II-r), (II-s), and (II-t) are missing.
(2a) In claim 1, the definition “p is 0, 1, 2, 3 or 4, and has the same meaning in Formula I and Formulae IIa-IIaa” (emphases added) lacks antecedent basis. Formulae IIa to IIaa were not established in claim 1 prior to this definition of p.
Also, even if there were proper antecedent basis, claim 1 is missing formulae
(II-q), (II-r), (II-s), and (II-t).
(2b) In claim 3, “p is 0, 1 or 2 and has the same meaning in Formula I and Formulae IIa-IIv” (emphases added) is indefinite for several reasons.
First, claim 3 has limited Y to a smaller group of formulas, so not all of formulae IIa to IIv are readable on claim 3. For example, formula IIc is not readable on claim 3.
Second, the formulas that are covered by Y in claim 3 are extremely confusing. As shown below, Y includes II-i, but there is no structural formula for II-i in claim 3:
[AltContent: rect]
Instead of the structure for II-i, structure for II-j is set forth; but as can be seen from above, II-j was not recited for ring Y in this claim.
Third, p is defined as having the same meaning as Formula IIa to IIv in claim 3, but strangely and most confusingly formulas other than Formula IIa to IIv are set forth in claim 3, e.g., Formula II-g, II-h, etc.
(2c) In claim 11, “P is 0, 1, 2, 3, or 4, and has the same meaning in Formula I-a and Formulae IIa-IIaa” is indefinite. Similar to (2b), supra, formulae II-q, II-r, II-s, and II-t are missing from “Formulae IIa-IIaa.”
(2d) Claim 11 has the same indefiniteness issue in the phrase, “p is 0 … or 4, and has the same meaning in Formula I-a and Formulae IIa-IIaa.” Formulae II-q, II-r, II-s, and II-t are missing from “Formulae IIa-IIaa.”
(3) In claim 6, there should be a comma after “C1-C4-alkyl” as shown below (see page 22 of the 6/12/2026 claim set):
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(4) In claim 12, “p is 0, 1, 2, 3 or 4, and has the same meaning in Formula
I-a-1 and Formulae IIa-IIaa” is indefinite. Formulae II-q, II-r, II-s, and II-t are missing from “Formulae IIa-IIaa.”
(5) In claim 12, the last two lines, “in the presence of a base and optionally in the presence of a transition metal catalyst, if appropriate additionally in the presence of a ligand” are indefinite. It is unclear when it would be appropriate or not appropriate.
(6) Dependent claims are included in this ground of rejection because they do not cure the deficiencies of their base claims.
Response to Applicant’s arguments filed on 6/12/2026
Applicant’s arguments that the previous issues of indefiniteness have been addressed are noted, but the claim set presented herein introduce additional indefiniteness issues, as fully detailed above.
35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 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 3 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.
In dependent claim 3, II-r and II-s are recited for the ring Y, but these rings were not part of the definition of Y in the independent claim 1.
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.
For these reasons, all claims must be rejected again.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699
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