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 1-28 are pending in the instant application.
Election/Restrictions
Applicant’s election of Compound 6 of Example A3, disclosed on page 160 of the instant specification (reproduced below),
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in the reply filed on February 6, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
The requirement is still deemed proper and is therefore made FINAL.
Applicant’s claimed compound genus has a number of variables and their permutations and combinations result in a vast number of compounds that are generically claimed. In an initial attempt to examine the full scope of claimed compounds, the structure search could not be completed due to the broadness of the query. In a second attempt using a much more limited structure search, over 6,000 Chemical Abstract Registry numbers were recovered in one database search alone. Therefore, the instant claimed compounds will be examined according to MPEP §803.02.
The claimed subject matter within some of the instant claims has been examined to the extent that it is readable on the elected species of Compound 6 of Example A3. Since no prior art was found on the elected species, the examination was expanded within some of the instant claims until prior art was found, in which case, the examination stopped and prior art has been applied against some of the claims. Note, MPEP §803.02.
The claimed subject matter of the expanded search and examination thus far, inclusive of the elected species of Compound 6 of Example A3, is as follows:
an ester compound of instant formula (1) or instant
formula (5) in dependent claim 6,
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wherein
one of R3/R4 and one of R9/R10 are bonded to one
another to form a ring;
one of R11/R12 and R23 form a multiple bond;
one of R15/R16 and one of R17/R18 form a multiple
bond;
one of R21/R22 and R24 form a multiple bond;
n1 = one;
n2 = zero;
n3 = zero;
n4 = zero;
n5 = zero;
n6 = one; and
all other variables are as defined in instant independent claim 1.
Claims embraced by the above identified expanded search and examination are claims 1-6, 10, 11, 13, 14, 17, 18 and 23-28.
Claims 7-9, 12, 15, 16 and 19-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on
February 6, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statements filed on June 1, 2023, December 12, 2023, March 1, 2024, April 17, 2024, July 30, 2024, April 17, 2025 and January 21, 2026. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 1, 4, 6, 10 and 11 are objected to because of the following informalities:
in claim 1, line 3 of the claim, “[Chem. 1]” should be deleted;
in claim 1, line 6 of the claim, an “or” should be added after the phrase “hetero atom-containing hydrocarbon group;” because the language which follows the phrase is an alternative definition of “R1 to R10, R23, and R24”;
in claim 1, line 8 of the claim, an “or” should be added after the phrase “adjacent substituents are directly bonded;” because the language which follows the phrase is an alternative definition of “R11 to R24;
in claim 4, line 3 of the claim, “[Chem. 2]” should be deleted;
in claim 4, an “or” should be added after formula (3) on page 5;
in claim 4, line 2 of page 6, an “or” should be added after the phrase “hetero atom-containing hydrocarbon group;” because the language which follows the phrase is an alternative definition of “R1 to R10, R23, and R24”;
in claim 4, line 4 of page 6, an “or” should be added after the phrase “adjacent substituents are directly bonded;” because the language which follows the phrase is an alternative definition of “R11 to R24;
in claim 6, line 3 of the claim, “[Chem. 3]” should be deleted;
in claim 6, lines 2-3 of page 7, an “or” should be added after the phrase “hetero atom-containing hydrocarbon group;” because the language which follows the phrase is an alternative definition of “R11, R15, R17, and R21”;
in claim 6, 6th line from the end of the claim, an “or” should be added after the phrase “hetero atom-containing hydrocarbon group;” because the language which follows the phrase is an alternative definition of “R11, R12, R15 to R18, R21, and R22”;
in claim 10, line 4 of the claim, “[Chem. 9]” should be deleted;
in claim 10, line 5 of the claim, an “and” should be added before the last divalent group listed (i.e., before “
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”);
in claim 10, 3rd line from the end of the claim, the “and” after the phrase “hetero atom-containing hydrocarbon group;” should be changed to an “or” because the language which follows the phrase is an alternative definition of R2’-R7’;
in claim 11, line 4 of the claim, “[Chem. 10]” should be deleted;
in claim 11, line 5 of the claim, an “and” should be added before the last divalent group listed (i.e., before “
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”); and
in claim 11, 2nd line from the end of the claim, the “and” after the phrase “having 1 to 20 carbon atoms,” should be changed to an “or” because the language which follows the phrase is an alternative definition of R2’-R5’.
Appropriate correction is required.
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.
Claim 24 is 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 24 lacks antecedent basis from independent claim 1 because of the proviso in claim 1. Claim 1 stipulates that “at least one set in R1 to R24 is bonded to one another to form a ring structure”. However, no such stipulation is found in dependent claim 24 and no two of variables R1-R24 are defined in claim 24 as being able to form a ring structure as required in claim 1. Therefore, claim 24 is indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 24 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 24 fails to further limit claim 1 because claim 24 is broader in scope than independent claim 1. Claim 24 does not require that one set in R1 to R24 is bonded to one another to form a ring structure as found in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
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 1-6, 10, 11, 13, 14, 17, 18, 23 and 25-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
the compound of Chemical Abstracts Registry Number 109398-16-5 {indexed in the Registry file on STN CAS ONLINE on July 25, 1987},
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{an ester compound of instant formula (1) or formula (5) in claim 6,
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when
R1 = a hydrogen atom;
R2 = a hydrogen atom;
R3 and R10 are bonded to one another to form a ring;
R4 = a hydrogen atom;
R9 = a hydrogen atom;
R11 = a heteroatom-containing hydrocarbon group (i.e., alkoxy);
R12 and R23 form a multiple bond;
R15 = a hydrogen atom;
R17 = a hydrogen atom;
R16 and R18 form a multiple bond;
R21 = a heteroatom-containing hydrocarbon group (i.e., alkoxy);
R22 and R24 form a multiple bond;
n1 = one;
n2 = zero;
n3 = zero;
n4 = zero;
n5 = zero;
n6 = one;
L1 = a hydrocarbon group (i.e., methyl);
L2 = a hydrocarbon group (i.e., methyl); and
X = a hydrocarbon group};
the compound of Chemical Abstracts Registry Number 1035055-47-0 {indexed in the Registry file on STN CAS ONLINE on July 21, 2008},
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{an ester compound of instant formula (1) or formula (5) in claim 6,
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when
R1 = a hydrogen atom;
R2 = a hydrogen atom;
R3 and R10 are bonded to one another to form a ring;
R4 = a hydrocarbon group (i.e., phenyl);
R9 = a hydrocarbon group (i.e., phenyl);
R11 = a hydrogen atom;
R12 and R23 form a multiple bond;
R15 = a hydrogen atom;
R17 = a hydrogen atom;
R16 and R18 form a multiple bond;
R21 = a hydrogen atom;
R22 and R24 form a multiple bond;
n1 = one;
n2 = zero;
n3 = zero;
n4 = zero;
n5 = zero;
n6 = one;
L1 = a hydrocarbon group (i.e., methyl);
L2 = a hydrocarbon group (i.e., methyl); and
X = a hetero atom};
and
Baran et al. {TR 2018016976 A2} – who disclose, for instance, Compound 9 on page 100,
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{an ester compound of instant formula (1) or formula (5) in claim 6,
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when
R1 = a hydrogen atom;
R2 = a hydrogen atom;
R3 and R10 are bonded to one another to form a ring;
R4 = a hydrogen atom;
R9 = a hydrogen atom;
R11 = a hydrogen atom;
R12 and R23 form a multiple bond;
R15 = a hydrogen atom;
R17 = a hydrogen atom;
R16 and R18 form a multiple bond;
R21 = a hydrogen atom;
R22 and R24 form a multiple bond;
n1 = one;
n2 = zero;
n3 = zero;
n4 = zero;
n5 = zero;
n6 = one;
L1 = a hydrocarbon group (i.e., methyl);
L2 = a hydrocarbon group (i.e., methyl); and
X = a hetero atom}.
Each of the above cited prior art disclose at least one compound that is embraced by the instant claimed invention as shown above. Therefore, each of the above cited prior art anticipates the instant claimed invention.
Note to Applicant: Not every piece of prior art found in the database search or class/subclass search which would anticipate and/or render obvious the instant claimed invention under examination has been applied against the instant currently pending claims under examination. See MPEP §904.03.
Reminder to Applicant
As a reminder, Applicant should specifically point out the support in the original disclosure {i.e., page number(s) and line number(s)} for any new claims or amended claims and for any amendments made to the disclosure. Making generic statements such as “all amendments are fully supported in the originally filed disclosure or the originally filed claims” without specifying page numbers and originally filed claim numbers are insufficient. See MPEP §714.02 and MPEP §2163.06(I).
Allowable Subject Matter
The elected species of Compound 6 of Example A3, disclosed on page 160 of the instant specification, is allowable over the prior art of record.
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
March 19, 2026
Book XXIX, page 15
Prosecution Insights