DETAILED ACTION
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 .
Priority
This application was filed 10/10/2022 and is a CIP of 16/760815 (04/330/2020) now US Pat 11466010 which is a 371 of PCT/US18/58286 (10/30/2018) which claims priority to PRO 62/579015 (10/30/2017). RCE papers were filed 12/19/2025 with an amendment and argument. Claims 1-24 are before the Examiner.
Response to Amendment
The amendment dated 06/29/2026 contains New Matter for claims 1 and 2. Due to this, the following New Grounds of Rejection is warranted.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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.
Claims 1-2 are 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. Specifically, the amendment to the claims that adds in a proviso… “and wherein when R1 is -OH, R4 is alkoxy” for both claims 1 and 2 is not specified in the instant specification. This is a new matter rejection.
If this New Matter is removed from the claims 1 and 2, then the following rejection from the previous office action dated 12/29/2025 would be upheld.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The rejection of claims 1, 2, 4 and 8 under 35 U.S.C. 102(a)(1) as being anticipated by Zhang, as stated in paper dated 09/30/2025, is upheld. Specifically on page 62
PNG
media_image1.png
170
156
media_image1.png
Greyscale
second compound where R=OH anticipates the instant claims. This compound fully anticipate the instant claims.
Applicant argues in paper dated 12/19/2025 that the amendments to claim 1 overcome the rejection of record. However, that is not the case. The two compounds taught by Zhang where the above pictured R is OH anticipates the instant claims. For the instant claims 1, 2, 4 and 8…X=C, X’=N, R1is OH, R2, R3 and R5=H and R4=OH. The proviso in claim 1 reads…when R1is either H or alkoxy then R4 is alkoxy. However, R1=OH is not within the scope of the proviso since R1 is neither H or alkoxy. Due to this, the rejection is upheld.
Claim Objections
Claims 3-12 (with the New Matter rejection) are objected to because of the following informalities: These claims depend from a rejected base claim but would be allowable if rewritten in independent form free of the above cited rejections. Appropriate correction is required.
Allowable Subject Matter
Claims 13-24 are free of prior art and are allowed.
Conclusion
Applicant's amendment (dated 06/29/2026) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D MARGARET M SEAMAN whose telephone number is (571)272-0694. The examiner can normally be reached M-F 8am-4pm Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D MARGARET M SEAMAN/Primary Examiner, Art Unit 1625
Prosecution Insights