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
Claims 1, 3, 5, 9, 12, 13, 16, 17, 19, 21, 24, 25, 53, 56, 57, 65, 68, 69, 73, 75, 77 and 79-88 are pending in the instant application.
Election/Restrictions
Applicant’s election with traverse of Group I,
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and the species of Compound A-62, disclosed on page 159 of the instant specification (reproduced below),
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in the reply filed on November 21, 2025 was acknowledged in the previous Office Action.
The requirement was deemed proper and therefore made FINAL in the previous Office Action.
Claims 79-81 and newly added claims 86-88 are withdrawn from further consideration pursuant to
37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 21, 2025.
Rejections and objections made in the previous Office Action that do not appear below have been overcome by Applicant’s amendments to the claims. Therefore, arguments pertaining to these rejections and objections will not be addressed.
As a result of the current amendments to the claims per the Amendment filed June 17, 2026, the following rejections apply.
Duplicate Claims, Warning
Applicant is advised that should claim 17 be found allowable, newly added claim 82 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1, 3, 5, 9, 12, 13, 16, 17, 19, 21, 24, 25, 53, 56, 57, 65, 68, 69, 73, 75, 77 and 82-85 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 1 is confusing because there is a valence problem in instant formula (I),
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, due to the definitions of variables Y1, Y2, Y3, q and R7 in claim 1. Variables Y1, Y2 and Y3 represent, independently, N or CH. The 6-membered ring in which the Y1, Y2 and Y3 variables are members of is an aromatic ring. There is no availability on this 6-membered aromatic ring for a R7 substituent when variable q represents 1, 2 or 3. See claim 3 for same. Therefore, claims 1 and 3 are indefinite.
Claims dependent on independent claim 1 which do not resolve the problem in claim 1 are also found indefinite.
Newly added dependent claim 82 is confusing because claim 82 refers to a Formula (II) but Formula (II) is not defined in claim 82 or in any of the claims that claim 82 depends. Therefore, claim 82 is indefinite.
Response to Arguments
Applicant’s arguments filed June 17, 2026 have been fully considered. In regard to there being a valence problem in instant formula (I) and instant formula (II) in independent claim 1 and dependent claim 3, respectively, Applicant argues that according to the present description, the term “substituted” means that a hydrogen atom is replaced by a substituent. Applicant further argues that in amended claim 1, variables Y1, Y2 and Y3 are CH and said hydrogen atoms provide appropriate positions for substitution by R7.
In response, independent claim 1, nor the instant specification, state that the fixed hydrogen in the definition of variables Y1, Y2 and Y3 (which each variable represents specifically CH) can be replaced. Applicant points to the definition of “substituted” in the instant specification in paragraph [26] on page 10 but the definition of variables Y1, Y2 and Y3 does not use the term “substituted” in claim 1 or in the specification. Therefore, Applicant’s arguments are not persuasive.
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 1, 3, 5, 9, 12, 13, 16, 17, 19, 21, 24, 25, 53, 56, 57, 65, 68, 69, 73, 75, 77 and 82-85 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7, 9, 12, 16-20, 22, 24, 25, 27-30, 32, 34, 36-38 and 40-42 of copending Application No. 18/711,807 (reference application), US 2025/0122191. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims compounds which anticipate the instant claimed invention. See the chemical structure of the elected species in the instant application in comparison with, for example, the compound claimed in column 1, row 4, on page 29 (claim 37) in copending Application No. 18/711,807,
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and claims 16 and 29 in copending Application No. 18/711,807.
The instant application and copending Application No. 18/711,807 share at least one common inventor (i.e., Hongbin Liu). The instant application and copending Application No. 18/711,807 are not related to each other and thus, no 35 USC 121 shield exists here. See MPEP §804.01. Therefore, the claims in copending Application No. 18/711,807 anticipate and/or render obvious the instant claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed June 17, 2026 have been fully considered. Applicant argues that the provisional nonstatutory double patenting rejection should be withdrawn if all other rejections have been overcome because the instant application has the oldest patent term filing date.
In response, the provisional nonstatutory double patenting rejection is not the only remaining rejection in the instant application. Therefore, the provisional nonstatutory double patenting rejection is maintained.
The elected species of Compound A-62, disclosed on page 159 of the instant specification, is not allowable. See the claims in copending Application No. 18/711,807 and especially the compound claimed in column 1, row 4, on page 29 (claim 37) in copending Application No. 18/711,807 as well as claims 16 and 29 in copending Application No. 18/711,807.
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.
This application contains claim 79-81 and 86-88 drawn to an invention nonelected with traverse in the reply filed on November 21, 2025. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144) See MPEP §821.01.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Laura L. Stockton
(571) 272-0710.
The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time.
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 acting supervisor,
James Alstrum-Acevedo can be reached on 571/272-5548. 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.
/LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620
Technology Center 1600
July 9, 2026
Book XXVIII, page 283
Prosecution Insights