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
This Office action is responsive to Applicant's Remarks/Amendment after Non-Final Rejection, filed Sept. 26, 2025. As filed, claims 1, 9-10, 17-25, 28-29, 32-33 are pending, of which claim 17 is amended. Claims 2-8, 11-16, 26-27, 30-31 are cancelled.
Claims 1, 9-10, 22-23, 25, 28-29, 32-33 are withdrawn from further consideration as being drawn to a nonelected invention.
A complete response to this Office Action should include cancellation of non-elected subject matter or other appropriate action.
Claims 17-19, 24 are examined herein.
Rejections Withdrawn
Applicants’ amendment, have been fully considered and are entered. The status for each rejection and/or objection in the previous Office Action is set out below.
1. The rejection of claims 17, 18 and 24 under 35 U.S.C. 102 (a)(1) as being anticipated by US 2971929, Feb. 1961, by Glade is withdrawn in view of claim amendment to specify that one of A or G variables of Markush formula II is an alkenyl.
2. The NSDP of claims 17-19, 24 over claims 1 and 11 of U.S. Patent No. 11,457,631 is withdrawn in view of arguments submitted by Applicants (Remarks page 4) which were carefully considered and found persuasive.
3. The rejection of claims 17-19, 24 under 35 U.S.C. § 103 over claims 23, 24, 45 of copending Application No. 18248020 is maintained. A terminal disclaimer has not been submitted to overcome this rejection.
The following are modified or new grounds of rejections necessitated by Applicants’ amendment, filed on 9/26/2025, wherein the limitations in pending claim 17 as amended now have been changed. The limitations in the amended claims have been changed and the breadth and scope of those claims have been changed.
Claim Interpretation
The term “hydrocarbyl” is interpreted in accordance with the discussion in [0027] of the specification as filed.
PNG
media_image1.png
200
400
media_image1.png
Greyscale
Claim Rejections - 35 USC § 112
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 17-19, 24 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, as amended claim 17 recites the broad recitation “hydrocarbyl” for definition of variable A and G (A is R… and G is R, wherein R is C1-10 hydrocarbyl…). and the claim also recites “alknenyl” which is the narrower statement of the limitation “hydrocarbyl”. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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 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.
(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 17, 18 and 24 are rejected under 35 U.S.C. 102 (a)(1) and 102(a)(2) as being anticipated by US 2574516, Feb. 1951 by Walter (cited in PTO-892 attached herewith).
The ‘516 patent teaches on col 2 lines 24-40 the diallyl phosphamide compound of structure shown below which corresponds to the instantly claimed compounds of formula II wherein variable Y is O, X is NH2 (instant claim 18) and A is C1-10 hydrocarbyl (C3-propenyl) and G is an alkenyl group.
Shown below is the anticipatory compounds disclosed by the ‘516 patent as displayed in Registry file:
RN 54590-46-4 CAPLUS
CN Phosphoramidic acid, di-2-propen-1-yl ester (CA INDEX NAME)
PNG
media_image2.png
123
308
media_image2.png
Greyscale
Regarding instant claim 24, the prior art teaches composition of the compound in solvent (col 2; example 1).
Since the compounds disclosed in the prior art has the same structure as the instantly claimed compound, each and every required element of the claim is taught and the claim is anticipated.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 17-19, 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 23, 24, 45 of copending Application No. 18248020. Although the claims at issue are not identical, they are not patentably distinct from each other because they are drawn to a substantial amount of overlapping subject matter. The elected species is recited in claim 45 of the ‘020 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 17-19, 24 are rejected. Claims 1, 9-10, 20, 21, 22-23, 25, 28-29, 32-33 are withdrawn from further consideration.
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 extension fee 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 date of this final action.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANA Z MURESAN/Primary Examiner, Art Unit 1692