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, 8, 11, 14, 16, 20, 22, 23, 26, 30-34, 39, 44, 47-50 and 53-57 are currently pending in the instant application. Applicants have amended claims 1-3, 5, 8, 11, 14, 16, 20, 22, 23, 26, 31-34, 39, 44, 45 and 47-50, cancelled claim 28 and added new claims 53-57 in an amendment filed on December 29, 2025. Claims 1-3, 5, 8, 11, 14, 16, 20, 22, 23, 26, 30-34, 39, 44, 47-50 and 53-57 are rejected in this Office Action.
I. Response to Arguments/Remarks
Applicants’ amendment, filed on December 29, 2025, has overcome the rejection of claims 1-3, 5, 8, 11, 14, 16, 20, 22, 23, 26, 28, 30-34, 39, 44, 45 and 47-50 under 35 USC(b) as lacking antecedent basis with regards to the variables L1, L2 and L3; the rejection of claim 2 under 35 USC 112(b) for lacking antecedent basis for the formula II and formula III; the rejection of claims 3, 5, 8, 11, 14, 20, 22, 26, 28, 34, 39, 44 and 45 under 35 USC 112(b) as being indefinite for the phrase “preferably”; the rejection of claims 1-3, 5, 8, 11, 14, 16, 20, 22, 23, 26, 28, 30-34, 39, 44, 45 and 47-50 under 35 USC 112(b) for being indefinite for the variables R1, R2, R9, R10, R11, R12, etc. that are not present in the formula; the rejection of claim 47 under 35 USC 112(b) as being indefinite for referring to examples in the claim not showing the structures; the rejection of claims 1-3, 5, 8, 11, 14, 16, 20, 22, 23, 26, 28, 30-34, 39, 44, 45 and 47-50 under 35 USC 112(a) for containing new matter. The above rejections have been withdrawn.
II. Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 29, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
III. Rejection(s)
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 obviousness-type 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 USPQ 2d 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-3, 5, 8, 11, 14, 16, 20, 22, 23, 26, 30-34, 39, 44, 47-50 and 53-57 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 6, 12, 15, 17, 20-21, 24, 27, 31, 35, 40, 45-47, 49-52 and 55-59 of copending Application No. 18/016,292. Although the conflicting claims are not identical, they are not patentably distinct from each other because the instant claims 1-3, 5, 8, 11, 14, 16, 20, 22, 23, 26, 30-34, 39, 44, 47-50 and 53-57 provide products which generically overlap with the copending application’s claimed products and provide species in instant claim 47 which anticipate the copending application’s claimed invention. For example, the compound 473
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found in the instant claim 47 is the same compound 473 that is found in copending claim 49.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
IV. Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on December 29, 2025 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 Shawquia Jackson whose telephone number is (571)272-9043. The examiner can normally be reached on M-F 7AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan can be reached on (571) 270-7674. 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).
/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626