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 .
Election/Restrictions
Applicant’s election without traverse of a compound of formula (B) in which examined variable W is silicon and is part of a spiro ring system in the reply filed on 2026 January 20 is acknowledged. Due to no prior art against a spiro compound of formula (B) in which examined variable W is silicon, the search is extended to compounds in which examined variable W is silicon substituted with at least one halogen, unsaturated alkyl group, or a carbocyclic group for examined variable RK2. Claims 1, 2, 66-72, 101, 102, and 110-117 are pending in the examined application. Due to the election of group I and a species with the same, claims 1, 2 66, 67, 110, and 111 are examined on the merits with respect to the Markush-type search.
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Claims 68-72, 101, 102, and 112-117 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2026 January 20.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2023 August 8, 2024 September 25, 2025 February 10, and 2026 January 20 have been submitted in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1, 2, 66, 67, 110, and 111 are objected to because of the following informalities: foggy / gray images in claims 1 and 2; and the presence of instructions in claims.
In claims 1 and 2 images with gray highlighting are present. The highlighting makes the images illegible because it covers of the bonds between the ring heteroatoms.
With regards to the ‘label’ and ‘instructions’, The MPEP states, “Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed.). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983)("Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T ]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.").” (MPEP § 2112.01).
When Gulack is applied to claim 111, the instructions do not carry patentable weight.
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.
Claims 1, 2, 66, 67, 110, and 111 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.
Claims 1, 2, 66. 67, 110, and 111 recite the compound below in the proviso. There is insufficient antecedent basis for this limitation in the claim because examined variables RK1 and RK2 are not permitted be an O-ethyl group.
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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 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.
Claim(s) 1, 2, 110, and 111 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HERGES (Journal of the American Chemical Society, 1996, 118, 12572-12757) describes reactant compounds (page 12756, scheme 3, third row reactant). In these compounds, the following examined definitions apply: each of (Ry, RY) and (RZ, RZ) are defined as (H, H); (Me, H), or (Me, Me). Compositions are described (page 12756, second column, last paragraph to page 12757, first paragraph).
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Conclusion
Claims 1, 2, 66. 67, 110, and 111 are not allowed.
The following is a statement of reasons for the indication of allowable subject matter: HUSTED (WO 2022/164503, published 2022 August 4) several compounds (page 79, claim 86) which do not anticipate or render obvious a compound of the examined application because the reference was published 2022 August 4, which is after the effective filing date of 2020 November 9.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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