DETAILED ACTION
The following Office action concerns Patent Application Number 17/999,440. Claims 1, 4, 5, 7, 9, 11-17, 19-21 are pending in the application. Claims 5, 7, 9, 11-13, 17, 19-21 are withdrawn from consideration as being drawn to non-elected inventions or non-elected species.
The applicant’s amendment filed November 19, 2025 has been entered. The declaration of Masataka Yamashita has been considered.
The previous grounds of rejection under 35 USC 112 are withdrawn in light of the applicant’s amendment.
The previous grounds of rejection under 35 USC 102/103 are maintained in this action and discussed below.
Claim Rejections - 35 USC §§ 102 and 103
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.
(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.
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 4, 14-16 are rejected under 35 U.S.C. § 102 as being anticipated by, or, alternatively, under 35 U.S.C. § 103 as being obvious over Cheng et al (WO 2019/195104, included in the applicant’s IDS).
Cheng et al teaches a compound:
PNG
media_image1.png
213
359
media_image1.png
Greyscale
(p. 2), wherein “D” includes:
PNG
media_image2.png
154
230
media_image2.png
Greyscale
(p. 3), wherein “Z” includes oxygen (p. 5, line 8), and wherein “P” includes, independently, hydrogen or phenyl (p. 4, structure P1). The above combination satisfies general formula (3) with “R” being H and “Ar” being phenyl.
In the event that the above disclosure is not sufficiently specific to anticipate the above listed claims, the examiner submits that the selection of the instantly claimed compound would have been obvious to a person of ordinary skill in the art since Cheng et al teaches a compound including each of the claimed substituents.
Response to Arguments
The applicant argues that the Cheng et al does not teach every element of the claimed invention. However, the applicant does not identify which element is missing. Therefore, the argument is not persuasive.
The applicant further argues that the compounds in Cheng et al have different properties than the claimed compounds. However, Cheng et al teaches a compound having the same structure as the claimed compound. Therefore, it must have the same properties. The fact that there are other compounds described in Cheng et al having different structures does not negate the teaching of the claimed structure.
Conclusion
No new ground(s) of rejection was 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.
Examiner’s Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Young whose telephone number is (571) 270-5078. The examiner can normally be reached Monday through Friday, 8:30 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached at 571-272-2817. 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./WILLIAM D YOUNG/Primary Examiner, Art Unit 1761 December 15, 2025