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 .
Claims 1-16 and 18-43 are pending in the instant application. Claims 6-8 and 24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected subject matter. Claims 1, 2, 4, 5, 9-16, 18-22, 26-28, 34, 35, 37, and 43 are rejected. Claims 3, 23, 25, 29-33, 36, and 38-42 are objected.
Response to Amendment and Arguments/Remarks
The amendment and arguments/remarks filed on June 29, 2026 have been fully considered and entered into the application. With regards to the 35 U.S.C. 102(a)(1) rejection as being anticipated by U.S. Patent No. 5,977,108, the grounds for rejection are moot in view of Applicant’s amendment and the rejection has been withdrawn.
However, this amendment has necessitated new grounds of rejection under 35 U.S.C. 102(a)(1), which are described below.
Election/Restrictions
It is noted that the search of the Markush-type claim has been extended to the non-elected species wherein:
L is a bond; X is -CR7R8-; and the rest of the variables are as defined in the claims.
As prior art has been found which anticipates the above identified nonelected species, the Markush-type claims are rejected as follows and the subject matter of the claims drawn to nonelected species held withdrawn from consideration. Claims 1-5, 9-16, 18-23, and 25-43 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since art was found on the nonelected species, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
New 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 (i.e., changing from AIA to pre-AIA ) 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)(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, 2, 4, 5, 9-16, 18-22, 26-28, 34, 35, 37, and 43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2012/062777 A1.
WO 2012/062777 A1 discloses the compound
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(see claim 5) which anticipates a compound of Formula (I) of the claims wherein L is a bond; Ring C, Ring B and Ring A are thiazolylene; m, n and o are 0; X is -CR7R8- wherein R7 and R8 are H; Y is -N(H)-; and Z is Z1 wherein Z1 is H.
Claim Objections
Claims 3, 23, 25, 29-33, 36, and 40-42 are objected to for depending on a previous rejected claim. However, even if claims 40-42 are amended to be in independent form, they would still not be in condition for allowance because they contain non-elected subject matter. In other words, the subject matter or species which are not embraced by the elected embodiment or the above identified nonelected species have been withdrawn from further consideration.
Claims 38 and 39 are objected to for containing non-elected subject matter (e.g., compound 2 wherein L is not a bond in claim 38). See above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection 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 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 KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622
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