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 .
Applicant's election with traverse of Group I, claims 1-6 and 17 in the reply filed on 01/05/2026 is acknowledged. The traversal is on the ground(s) that it would not pose an undue burden to examine the full scope of the claimed invention. This is not found persuasive because all the inventions listed in the restriction requirement are independent or distinct for the reasons given in the restriction requirement of 12/08/2025 and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
• The inventions have acquired a separate status in the art in view of their different classification
• The inventions have acquired a separate status in the art due to their recognized divergent subject matter
• The inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries).
Applicant has not provided any evidence or explanation as to why undue burden would not be posed to examine the full scope of the claimed invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/05/2026.
Claims 1-17 are pending. Claims 1-6 and 17 are being examined. Claims 7-16 are withdrawn from further consideration as being drawn to un-elected inventions.
Claim Objections
Claim 17 is objected to because of the following informalities: “A compounds” should be “A compound”. Appropriate correction is required. Upon correction, claim 17 would be allowable.
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 3 and 5 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.
Considering claims 3 and 5, it is unclear whether or not all the groups Z1, Z2, Z3, A1, A2, A3 and A4 must be present in the compound because the presence of those groups depends on the value selected for r, s, t, and u. It is unclear whether claims 3 and 5 require particular/specific values for r, s, t, and u. For the purpose of examination, the selection of the groups is optional relative to the values selected for r, s, t, and u. For example when r is 0, A1 and Z1 are not present in the compound the selection of A1 and Z1 from the list of groups in claim 3 is not required.
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 3 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 3 requires T to be selected from a group that includes H; however, claim 1 from which claim 3 depends requires selection of T from a group that does not include H. 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 (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.
Claims 1-4, 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Song et al. (US 2019/0284474 A1).
Considering claim 1, Song teaches the below compound
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of the claimed formula I
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98
538
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in which T denotes a straight chain alkyl having 3 carbon atoms, ZT and Z3 denote a single bond, Sp denotes a spacer group (CH2), G denotes -OH, A3 denotes an aromatic ring having 6 ring atoms, B denotes
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94
202
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wherein RL on each occurrence denotes H and X denotes F; r, s, and u are 0 (Song, [0216]).
Considering claim 2, Song teaches a compound with the formula IA-1d by teaching the below compound
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66
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in which T denotes a straight chain alkyl having 3 carbon atoms, ZT and Z2 denote a single bond, Sp denotes a spacer group (CH2), G denotes -OH, A2 denotes an aromatic ring having 6 ring atoms, B denotes
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94
202
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wherein RL on each occurrence denotes H and X denotes F; r, t, and u are 0 (Song, [0216]).
Considering claim 3, Song teaches T denotes a straight chain alkyl having 3 carbon atoms (Song, [0216], compound I-2).
Considering claim 4, Song teaches a compound with the formula IA-2 by teaching the below compound
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in which T denotes a straight chain alkyl having 3 carbon atoms, ZT and Z3 denote a single bond, Sp denotes a spacer group (CH2), G denotes -OH, A3 denotes an aromatic ring having 6 ring atoms, B denotes
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94
202
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wherein RL on each occurrence denotes H and X denotes F; r and u are 0 (Song, [0216]).
Considering claim 6, Song teaches the group B in the compound denotes
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78
90
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82
86
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(Song, [0216], compound I-2).
Claims 1 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cable et al. (US 2019/0083515 A1).
Considering claim 1 and 4-5, Cable teaches a compound of formula IA-2 by teaching the following compound:
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90
254
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wherein G denotes -PO(OH)2 and A3-Z3 denotes
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94
88
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; r and u are zero (Cable, page 42).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANITA NASSIRI-MOTLAGH whose telephone number is (571)270-7588. The examiner can normally be reached M-F 6:30-3:00.
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/ANITA NASSIRI-MOTLAGH/Primary Examiner, Art Unit 1734