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 .
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.
Election/Restrictions
Applicants’ claim amendments rendered moot the prior art rejection of record.
Examiner extended the Markush search to the following species of genus formula II (instant claim 6):
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, wherein: R1A, R2A, R4A, and R5A are each hydrogen (H); R3A is the halogen chlorine (thus at least one of R1A, R2A, R3A, R4A, and R5A is not a H atom-per the disclaimer on page 9 of the claim-set); QA is QA3:
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, wherein R9A is H (it appears Applicants mistakenly deleted this from page 8—see the indefiniteness rejection, below); m is 0; and ZA is an unsubstituted C2hydrocarbon chain. This search retrieved prior art.
Therefore, the Markush search will not be extended unnecessarily to other species of elected Group II claim 6 genus formula II in this Office Action. This is in accordance with Markush search practice.
Claims 8-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to species not encompassed by the Markush search extension, above, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 May 2025. In response to page 16 of 5 September 2025 Remarks, where Applicants request claim 10 be rejoined to the elected Group II claims, the Examiner responds that claim 10 will be rejoined once the Markush search is extended to the species encompassed by claim 10, per Markush search practice. See “NOTE”, below, about why withdrawn claims 8-10 could properly be found both indefinite (35 USC 112(b)) and not further limiting (35 USC 112(d)) once they are rejoined. Applicants are encouraged to cancel claims 8-10 to avoid getting an indefinite rejection and a separate 35 USC 112(d) rejection.
Please file RCE to resume Markush search extensions on the genus Formula II of elected Group II claim 6. Additional Markush searching will not occur in After Final as this constitutes “additional search and/or consideration”.
Rejoinder of the following withdrawn groups will be considered per Rejoinder rules once elected Group II is allowable. To expedite allowance, please cancel non-elected/withdrawn groups that are not drawn to a method of making or using the elected Group II formula II.
Claims 1-5 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention of Group I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 May 2025.
Claim 11 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention of Group III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 May 2025.
Claim 12 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention of Group IV, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 May 2025.
Claim 14 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention of Group V, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 May 2025.
Claim 15 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention of Group VI, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 May 2025.
Claim 16 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention of Group VII, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 May 2025.
Claim 17 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention of Group VIII, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 May 2025.
Claim 18 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention of Group IX, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 May 2025.
Current Status of 17/996,732
This Office Action is responsive to the amended claims of 5 September 2025.
Claims 6-7 have been examined on the merits. Claim 6 is currently amended. Claim 7 is previously presented.
Priority
The effective filing date is 21 April 2021.
Response to Arguments
The Examiner acknowledges receipt of and has reviewed Applicants’ claim amendments and Reply of 5 September 2025.
Applicants’ claim amendments to claim 6 limiting QA to
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render moot the prior art rejection of record (made within paragraphs 25-27 of the previous Office Action). Moreover, Applicants made a convincing argument that the cycloalkyl of variable ZA does not include a phenyl, thus further distinguishing the previously provided reference ACS (this is the reference in prior art rejection of record) from the instant amended claim 6.
Applicants allege that claim 10 was improperly withdrawn during the last Markush search extension for the previous prior art rejection of record (see page 16 of 5 September 2025 Remarks). However, the previous prior art rejection of record was to a compound wherein QA was to QA2 (see page 6 of the Non-Final Office Action mailed 17 June 2025). In contrast, claim 10 (the 2023-02-28 claim-set used to write the Non-Final Office Action mailed 17 June 2025) was drawn to QA being QA1. Thus, the previous prior art rejection did not read on claim 10, and per Markush search practice, the Examiner properly designated claim 10 as withdrawn. Recall, the previous Examiner wrote an Election of Species Requirement with the Restriction Requirement (mailed 18 March 2025). In response, Applicants elected Group II and the elected species both without traverse in their Reply of 14 May 2025.
Claim 10 will be rejoined once an extended Markush search occurs in RCE and yields prior art, or, when the full scope of instant claim 6 has been searched after future Markush search extensions and found to be free of the prior art. This is in accordance with Markush search practice.
Note, withdrawn claims 8-10 make reference to variables Applicants deleted from parent claim 6. Examiner encourages Applicants to cancel claims 8-10 to expedite allowance.
Response to Amendment
Claim Objections
Claim 6 is objected to for the phrase: “a combination of QA and m represents a combination, wherein”. This phrase no longer makes sense in light of Applicants’ amendments to claim 6 narrowing QA to just QA3. Please strike the phrase to render moot this objection.
Claim 7 is similarly objected to as this claim refers back to claim 6 but does not remedy the rationale underpinning the basis for objecting to claim 6.
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 6-7 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.
Claim 6 contains the limitation “wherein QA represents a group represented by QA1” and then proceeds to show QA1 deleted:
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. Furthermore, claim 6 deletes the narrative permitting QA to be QA3:
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. Also, claim 6 deletes a further limitation explaining / defining the variable R9A, which is part of moiety QA3. Given each of these inconsistencies, the metes and bounds of claim 6 is undefined (hence rendering claim 6 indefinite). This rejection will be rendered moot once Applicants reconcile what QA actually is. Based on what the Examiner can understand from Applicants’ revisions, it appears QA can now only be moiety
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. Thus, reference to “a combination of QA and m” and QA1 and QA2 plus references to variables R6A, R7A, and R8A should be deleted from claims 6-7 (and withdrawn claims 8-10).
Claim 7 is similarly rejected as indefinite since it refers back to claim 6.
This rejection is properly made FINAL in accordance with Applicants’ claim amendments.
NOTE: Please note that withdrawn claims 9-10 disclose QA1 which Applicants deleted in parent claim 6. Once claims 9-10 are rejoined, these claims will lack antecedent basis (therefore being indefinite under 35 USC 112(b)) and not properly further limit (35 USC 112(d)) claim 6. Applicants should cancel claims 9-10 before rejoinder to expedite allowance.
NOTE: Withdrawn claim 8 discloses limitations R6A, R7A, and R8A which do not belong to QA3 but rather belong to QA1 and QA2 (Applicants deleted QA1 and QA2 in parent claim 6). Therefore, claim 8, once rejoined, will also be indefinite as lacking antecedent basis and will also not properly further limit parent claim 6. Please cancel claim 8 before rejoinder to expedite allowance.
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 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS 3 (American Chemical Society. Chemical Abstract Service. RN 35534-75-9. Entered into STN: 16 November 1984).
The prior art reference ACS 3 teaches the compound:
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(see enclosed ACS reference), which is a compound of genus formula II from instant claim 6, wherein: R1A, R2A, R4A, and R5A are each hydrogen (H); R3A is the halogen chlorine (thus at least one of R1A, R2A, R3A, R4A, and R5A is not a H atom-per the disclaimer on page 9 of the claim-set); QA is QA3:
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, wherein R9A is H (it appears Applicants mistakenly deleted this from page 8—see the indefiniteness rejection, above); m is 0; and ZA is an unsubstituted C2hydrocarbon chain. This anticipates instant claims 6-7.
NOTE: Claim 8 is not rejected since applicants deleted R9A.
This rejection is properly made FINAL as it is due to Applicants’ claim amendments to claim 6.
Conclusion
No claims are presently allowable as written.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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 D 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.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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