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:
Group I (e.g. claims 1, 3, 9-10, 26, 36-39, 43 and 66-67) drawn to a compound of formula (I); and
the elected species of formula (I) depicted as:
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, which the Examiner respectfully notes is the second recited compound in claim 66, in the reply filed on October 27, 2025 is acknowledged.
No prior art was found for the elected species as depicted above.
Therefore, the species election mailed on August 20, 2025 is hereby modified to encompass compounds of formula (I) where Y is C(=O) in addition to the full scope of R1-R4 as recited in claim 1. Thus, the Examiner respectfully notes the modified species election discussed above corresponds to claims 1, 3, 9-10, 26, 36-39, 43 and 66-67.
Claims 68-70, 75-76 and 80-84 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 27, 2025.
Claim Status
The claim set filed October 27, 2025 has been entered. Claims 2, 4-8, 11-25, 27-35, 40-42, 44-65, 71-74, 77-79 and 85-112 are canceled. Claims 68-70, 75-76 and 80-84 are withdrawn from further consideration as being drawn to non-elected inventions as discussed in greater detail in the Election/Restrictions section above.
Thus, claims 1, 3, 9-10, 26, 36-39, 43 and 66-67 as amended are examined on the merits herein.
Claim Objections
Claim 37 is objected to because of the following informalities:
Claim 37, line 2 recites “an C1-6 alkylcarbonyl” which is the second recitation of this limitation as its previously recited in lines 6-7 of claim 1, from which claim 37 relies. Thus, to promote clarity the Examiner suggests deleting the word “an” as recited above.
Claim 37, line 4 recites “C6-10 arylcarbonyl,carboxy,” which is missing a blank space between the comma and the word “carboxy”. Thus, to promote clarity the Examiner suggests inserting a blank space as discussed above.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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, 26 and 66 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kozakai et al. (Published 28 October 2004, US-20040213994-A1, PTO mailed 08/20/2025).
Regarding claims 1, 3, 26 and 66, Kozakai teaches a compound which is a non-limiting example of the tetracarboxylic dianhydride of formula (3) which is depicted as
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, see pg. 3, right column, second recited compound.
The Examiner respectfully notes the compound of Kozakai as depicted above corresponds to the compound of formula (I) of claim 1, when Y is C(=O) and R1=R2=R3=R4=H, as required in claims 1, 3 and 26.
Additionally, the Examiner respectfully notes the compound of Kozakai depicted above corresponds to the third recited compound within claim 66.
Thus, the compound of Kozakai depicted above anticipates claims 1, 3, 26 and 66.
Allowable Subject Matter
Claims 9-10, 36, 38-39, 43 and 67 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 following is a statement of reasons for the indication of allowable subject matter: Kozakai teaches as set forth above. However, the teachings of Kozakai do not anticipate nor make obvious modifying the compound of Kozakai above with the restricted groups recited within (a) R1-R4 of claims 9-10; (b) R1 and R3 of claims 36 and 38-39; and (c) Cy4 of claim 43.
Additionally, the teachings of Kozakai do not anticipate nor make obvious a pharmaceutical composition comprising the elected compound of formula (I) of claim 1.
Conclusion
No claims are allowed in this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARET J CREWS whose telephone number is (571)270-0962. The examiner can normally be reached Monday-Friday: 9:00am-5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691