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 .
Status of the Claims
Claims 2, 4, and 6 are pending in this application. Claims 1, 3, 5, and 7-11 have been cancelled by applicant.
Allowable Subject Matter
Claim 4 is allowed.
Examiner Notes
Claims 2 and 6 are free of the prior art, and would be allowable if not for the formal matters indicated in this office action.
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 2 and 6 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, claim 2 recites the broad recitation “C1-6 alkyl” and “C3-C6 cycloalkyl” when defining R1, and the claim also recites “methyl, ethyl, . . . and cyclopropyl” which are the narrower statement of the range/limitation. Similar issues are observed with the definitions of all variables in claim 2, in all the statements following the term “further”.
The claim is 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. Examiner suggests deleting the narrower limitations (all limitations following the term “further”).
Claim 6 is rejected for depending upon the limitations of claim 2.
Response to Arguments
Claims
Claim amendments are acknowledged. No new matter has been introduced.
Claim Rejections - 35 USC § 112(b)
Applicant's arguments filed 02/03/2026 have been fully considered but they are not persuasive.
Applicant’s arguments, shown below, fail to acknowledge or remedy indefiniteness issues pointed out in the non-final action mailed 12/11/2025 (pages 2-3). In this 35 USC § 112(b) rejection, Examiner never indicated that claim 2 was limited to the compounds of Formula III or IV, and it is unclear what Applicant means by “there are three compounds (49, 56 and 81)” as there are no such compounds in instant claim 2.
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As such, claim 2 stands rejected under 35 USC § 112(b). Claim 6 is rejected for depending upon the limitations of claim 2.
Claim Rejections - 35 USC § 112(d)
Applicant’s arguments, see page 15, filed 02/03/2026, with respect to 35 USC § 112(d) rejection have been fully considered and are persuasive. The 35 USC § 112(d) rejection of the claims has been withdrawn.
Double Patenting
The terminal disclaimer filed on 02/03/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Copending Application 18/014,157 has been reviewed and is accepted. The terminal disclaimer has been recorded. The non-statutory double patenting rejections of record are withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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 JACKSON J HERNANDEZ whose telephone number is (571)272-5382. The examiner can normally be reached Mon - Thurs 7:30 to 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney L. Klinkel can be reached at (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACKSON J HERNANDEZ/Examiner, Art Unit 1627
/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627