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 .
Response to Amendment
The 2026 May 6 amendment containing claims 24-29 is acknowledged. The objections and rejections of 2026 February 25 are overcome for the following reasons: the phrase “mixtures thereof” is not recited in the new claims; claims 1-23 are now cancelled; and SHI (WO 2011159327, published 2011 December 22) does not recite compounds in which examined variables E and G1 form an -O-C(RcRd)- group with each other.
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.
Newly added claims 24-29 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.
The dashed bond connecting variables L1 and R2 has unclear metes and bounds. Is it meant to describe that these two variables can forma ring with one another? In the claim set of 2023 March 10, the following text is present:
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Is this the interpretation that applicants intend? The new claims do not contain this language.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 24-29 recites the broad recitation of a compound of formula IIb, and the claim also recites compounds IIb-18, IIb-25, IIb-43, and IIb-46, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Due to the scope of formula IIb being broader than each of the specific compounds, a broad and narrow groups are present in the same claim. In the specific compounds, variable R7 is OH. In the broad group R7 is eleven different groups including hydroxyl.
Regarding claim 24, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. The language “(NRiRj)” is interpreted as such language because the language “(NRiRj)” is one embodiment of an alkylamino group for variable X5. See MPEP § 2173.05(d).
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.
Claims 24-29 are not allowed.
The following is a statement of reasons for the indication of allowable subject matter: SHI (WO 2011159327, published 2011 December 22, cited in previous action) describes example 262 (page 271, lines 9-15). This compound does not anticipate of render obvious a compound of formula IIb because variable E and G1 are not permitted to form an -O=CH=CH- group with each other.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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