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 .
DETAILED ACTION
This Office action is responsive to Applicant's Remarks/Amendment after Non-Final Rejection, filed Jan 26, 2026. As filed, claims 1-5, 10-16, 25, 45, 48, 52-56, and 60 are pending; of which claims 1, 16 are amended.
Claims 1, 2, 4, 5, 15, 25 are examined herein. Claims 3, 10-14, 16 45, 48, 52-56, and 60 are withdrawn from further consideration as pertaining to non-elected invention.
A complete response to this Office Action should include cancellation of non-elected subject matter or other appropriate action.
Information Disclosure Statement
Applicants' information disclosure statements (IDS) have been considered except where lined through. Please refer to Applicants' copy of the 1449 submitted herewith.
Rejections Withdrawn
Applicants’ amendment, have been fully considered and are entered. The status for each rejection and/or objection in the previous Office Action is set out below.
1. The rejection of claims 1, 2, 4, 15 under 35 U.S.C. § 102(a)(1) over Perez et al. Journal of Medicinal Chemistry (2012), 55(22), 9669-9681 is withdrawn in view of amendments to claims to redefine variable G1 as
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2. The rejection of claims 1, 2, 4, 15, and 25 under 35 U.S.C. § 103 over Perez et al. Journal of Medicinal Chemistry (2012), 55(22), 9669-9681 is withdrawn in view of amendments to claims.
Claim Objections
1.Claims 1, 2, 4, 5, 15, 16, 25 are objected to for reciting improper Markush language: the recitation in claims for definition of variables G1-G6 of Markush formula “is” should be changed to “selected from the group consisting of”. See MPEP 803.02. “A Markush-type claim recites alternatives in a format such as "selected from the group consisting of A, B and C."
2. The recitation in claims “x+y = 3, 4, or 5” should be rephrase to replace the equation.
3. The recitation in claim 1 for definition of variable G3 “ -(CH2)nC3H5,” and “C5-C6 alkyl” appears to be redundant for n is 2 or 3- which would be a C5-6 alkyl.
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
1.Claim 1, 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 617001 A1 19940928 by Tata et al. (cited in PTO-892 attached herewith).
The ‘001 publication teaches on page 47 line 26, the compound 2,6-dipropyl-4-(2-hydroxyethyl)phenol shown below as disclosed in Registry data base which corresponds to the compound of formula I wherein G1 is -CH2C(R1)(R2)OH wherein R1 and R2 are both H (instant claim 16), G2 is H, G3 is -(CH2)nC3H5 and n is 0 (-C3H5 alkyl) G4 is -OH, G5 is -(CH2)nC3H5 and n is 0, and G6 is H.
Shown below is the compound of the prior art as displayed in registry data base:
RN 159591-64-7 CAPLUS
CN Benzeneethanol, 4-hydroxy-3,5-dipropyl- (CA INDEX NAME)
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Therefore, the prior art teaches the limitations of instant claims.
2. Claim(s) 1 and 2, 4, 15, 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry STN Substance Record for 1189160-74-4 Entered STN: 20 Oct 2009 (cited in PTO-892 attached herewith).
CAS Registry RN 1189160-74-4, entered Registry data base on 20 oct. 2009, discloses the compound shown below which corresponds to the compound of formula I wherein G1 is -CH2C(R1)(R2)OH wherein R1 and R2 are both H (instant claim 16), G2 is H, G3 is C5 alkenyl (instant claims 2 and 4); G4 is -OH, G5 is H (instant claim 15), and G6 is H.
Shown below is the anticipatory compound as displayed in registry data base:
RN 1189160-74-4 CAPLUS
CN Benzeneethanol, 4-hydroxy-3-(3-methyl-2-buten-1-yl)- (CA INDEX NAME)
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Therefore, the prior art teaches the limitations of instant claims.
3. Claim 1 and 5, 15, 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry STN Substance Record for 2387388-89-6, Entered STN: 02 Dec 2019 (cited in PTO-892 attached herewith).
CAS Registry RN 2387388-89-6 discloses the compound shown below which corresponds to the compound of formula I wherein G1 is -CH2C(R1)(R2)OH (instant claims 1, 16); wherein R1 and R2 are both H, G2 is H, G3 is-C(O)-R3 and R3 is alkyl optionally substituted, G4 is -H (instant claim 5), G5 is H (instant claim 15), and G6 is H.
Shown below is the anticipatory compound as displayed in Registry data base:
RN 2387388-89-6 CAPLUS
CN 1-Propanone, 2-hydroxy-1-[3-(2-hydroxyethyl)phenyl]-2-methyl- (CA INDEX
NAME)
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Therefore, the prior art teaches the limitations of instant claims.
Allowable Subject Matter
Claims 3 and 25 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.
Relevant prior art
1. ANSWER 47 OF 188 CAPLUS COPYRIGHT 2026 ACS on STN
AN 2010:442685 CAPLUS Full-text
DN 153:310774
TI Thermolysis of 4-(ω-hydroxyalkyl)-2,6-di-tert-butylphenols
AU Krysin, A. P.; Egorova, T. G.; Vasil'ev, V. G.
CS Vorozhtsov Novosibirsk Institute of Organic Chemistry, Siberian Branch,
Russian Academy of Sciences, Novosibirsk, 630090, Russia
SO Russian Journal of General Chemistry (2010), 80(2), 275-283
CODEN: RJGCEK; ISSN: 1070-3632
DOI 10.1134/S1070363210020167
PB Pleiades Publishing, Ltd.
DT Journal
LA English
OS CASREACT 153:310774
AB The process of thermolysis of tert-butylated hydroxyalkyl phenols includes
de-tert-butylation, etherification, and fragmentation of the hydroxyalkyl
group. From the proposed schemes of the mechanism of thermal
de-tert-butylation the path of the search for catalysts for the synthesis
of 4-hydroxyalkylphenols is defined and transformations of the byproducts
into biol. active substances were considered.
IT 176308-57-9P
RL: SPN (Synthetic preparation); PREP (Preparation)
(prepn. of)
RN 176308-57-9 CAPLUS
CN Benzeneethanol, 3-(1,1-dimethylethyl)-4-hydroxy- (CA INDEX NAME)
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IT 3673-68-5
RL: RCT (Reactant); RACT (Reactant or reagent)
(thermal de-tert-butylation and dimerization in presence of acid of)
RN 3673-68-5 CAPLUS
CN Benzeneethanol, 3,5-bis(1,1-dimethylethyl)-4-hydroxy- (CA INDEX NAME)
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OSC.G 2 THERE ARE 2 CAPLUS RECORDS THAT CITE THIS RECORD (2 CITINGS)
RE.CNT 31 THERE ARE 31 CITED REFERENCES AVAILABLE FOR THIS RECORD
ALL CITATIONS AVAILABLE IN THE RE FORMAT
2. CAS Registry STN Substance RN 935863-65-3 CAPLUS
CN Benzeneethanol, 3-(1,1-dimethylethyl)- (CA INDEX NAME)
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3. CAS Registry STN Substance RN 849909-56-4 CAPLUS
CN Benzeneethanol, 3-butyl- (CA INDEX NAME)
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Conclusion
Claims 1, 2, 4, 5, 16 are rejected. Claims 3 and 25 are objected to. Claims 10-14, 16, 45, 48, 52-56, and 60 are withdrawn from further consideration.
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.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587 (phone)
(571)270-8587 (fax)
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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