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 1, 10, 13, 20-22, 24, 27-28, 32-35, 39, 43, 54, and 58 are pending. Claims 13, 20-21, 24, 33-35, 39, 43, and 58 are withdrawn. Claims 1 and 54 are rejected. Claim 32 is allowable. Claims 10, 22, and 27-28 are objected to.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 2/24/2023 was considered by the Examiner.
Election/Restrictions
Applicant’s election without traverse of Group I and the species A-16:
PNG
media_image1.png
134
168
media_image1.png
Greyscale
** in the reply filed on 2/2/2026 is acknowledged.
**Applicant originally elected a species that was excluded from claim 1. Examiner contacted Applicant and they changed their election to compound A-16, shown supra, on 2/21/2026.
Claims 1, 10, 22, 27-28, 32 and 54 embrace the elected species and are therefore under examination. Applicant’s elected species is allowable. As per MPEP 803.02, “Following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability.” Additionally, claim 32 has been searched in full and is allowable. Claims 1, 10, 22, 27-28 and 54 are free of the art but have been rejected/objected to below in the interest of compact prosecution.
Claims 13, 20-21, 24, 33-35, 39, 43, and 58 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 1 is objected to because of the following informalities:
For the compounds listed on p. 5-8, Examiner recommends placing commas between them and inserting an “or” between the last two;
Claim 1 does not end in a period.
Appropriate correction is required. Additionally, claims 10, 22, 27-28 and 54 are objected to for depending from an objected claim and failing to remedy the deficiencies.
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 and 54 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.
On p. 8 of claim 1, the last two compounds:
PNG
media_image2.png
127
448
media_image2.png
Greyscale
, do not correctly depend from instant formula A-1:
PNG
media_image3.png
164
298
media_image3.png
Greyscale
(all within the same claim), particularly the cyclic “A” requirement. It is unclear if the cyclic “A” is truly required or not, because of this discrepancy. If cyclic “A” is required, Examiner recommends removing the last two compounds, shown supra, from the list on p. 8.
Claims 10, 22, and 27-28, which depend from claim 1, either directly or indirectly require the cyclic “A”. Claim 54 is rejected for depending from claim 1 and failing to remedy its deficiencies.
Closest Prior Art
The closest prior art is US11040964 (eligible as 102(a)(2) art). US11040964 teaches the following compound as an intermediate in column 129:
PNG
media_image4.png
225
287
media_image4.png
Greyscale
. This compound is excluded from the instant claims on p. 5, bottom line. As an intermediate in the prior art and specifically excluded from the instant claims, this prior art compound does not provide motivation for, nor render obvious, the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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 supervisor, Amy Clark can be reached at 571-272-1310. 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.
/MEGHAN C HEASLEY/ Examiner, Art Unit 1626
Prosecution Insights