DETAILED ACTION
Claims 1-10, submitted 25 February 2026, are pending in the application. Claims 9-10 are withdrawn. Claims 1-8 are under examination in the instant Office 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 of Invention II, claims 4-8, in the reply filed on 25 February 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-3 and 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.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 25 February 2026.
Claims 4-8 are allowable. The restriction requirement between Inventions I-III, as set forth in the Office action mailed on 29 December 2025, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of Invention I is withdrawn. Claims 1-3, directed to a dipyrrolidine-1-one compound of formula I are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. However, claims 9-10, directed to a method for treating a tumor are withdrawn from consideration because they do not require all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
In summary, claims 1-8 are under consideration in the instant office action and claims 9-10 remain withdrawn.
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 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kinoshita et al. ("A New and Convenient Wittig-type Reaction for the Preparation of Pyrromethenone Derivative." Chemistry letters 22.8 (1993): 1441-1442.).
Kinoshita teaches a compound identical to that of the Applicant which reads on the limitations of instant claim 1. Kinoshita exemplifies the compound, shown below, which reads on the limitations of the genus of instant claim 1 when R = C-1 alkyl (i.e., methyl); R1 = p-toluene sulfide; and R2 = alkoxycarbonyl (i.e., tert-butyloxycarbonyl).
Compound VIII taught by Kinoshita
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134
242
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(pg. 1, Compound VIII)
Compound 1c taught by Applicant
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83
241
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(Claim 3, Compound 1c)
Allowable Subject Matter
Claims 4-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The closest prior art is Kinoshita, which teaches a method of preparing a dipyrromethenone compound which is identical to that of the Applicant. However, the method taught by Kinoshita requires a different substrate and requires the removal of a the SO2-Tol, shown below.
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517
654
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Conclusion
Claims 1-3 are rejected. Claims 4-8 are objected to. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN CHRISTOPHER SANCHEZ whose telephone number is (703)756-5336. The examiner can normally be reached Monday -Friday (0730-1700).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H Alstrum-Acevedo can be reached at 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JUSTIN CHRISTOPHER SANCHEZ
Examiner
Art Unit 1622
/J.C.S./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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