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
The Examiner notes independent claim 1 has been amended as recited and explained in Applicant’s remarks filed April 17, 2026, see pg. 9 of 11, the two bulleted paragraphs.
However, the Examiner also notes in view of amended independent claim 1, new 112 rejections have been made rejecting at least independent claim 1 as discussed below.
Therefore, in view of the new 112 rejections, the Examiner notes independent claim 1 is currently not allowable and particularly notes independent claim 1 is the linking claim for all method claims that were not elected as discussed in the non-final rejection mailed December 19, 2025, pg. 2-3, election/restrictions.
Accordingly, rejoinder of claims 68-70, 75-76 and 80-84 as drawn to nonelected inventions as discussed in said non-final rejection above is not appropriate at this time; and thus, these claims are still currently withdrawn from further consideration.
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed on 04/20/2026 has been considered by the Examiner inasmuch as foreign documents have been submitted into the file wrapper in English.
Claim Status
The claim set and Applicant’s remarks filed April 17, 2026 have been entered.
Claims 2, 4-8, 10-25, 27-35, 39-42, 44-66, 71-74, 77-79 and 85-112 are canceled. Claim 113 is new.
Claims 68-70, 75-76 and 80-84 continue to be withdrawn from further consideration as discussed above.
Thus, claims 1, 3, 9, 26, 36-38, 43, 67, and 113 as amended are examined on the merits herein.
Withdrawn Objections and Rejections
With respect to the objections and/or rejections mailed in the non-final office action on December 19, 2025:
(I) The objection to claim 37 is withdrawn in view of Applicant’s amendments to the claim.
(II) The rejection of claims 1, 3, 26 and 66 under 35 U.S.C. 102(a)(1) is withdrawn in view of Applicant’s amendment to claim 1.
Claim Objections
Claim 113 is objected to because of the following informalities:
Claim 113, line 1, recites “A compound of claim 36”, which the Examiner reasonably considers the article “A” to be a clear error as claim 113 is a dependent claim.
Thus, the article “A” as discussed above should be replaced with “The”.
Appropriate correction is required.
New Claim Rejections
The following are new ground rejections necessitated by Applicant's amendment, in the claim set filed on April 17, 2026, where the limitations in elected claims 1, 3, 9, 26, 36-38, 43 and 67 as amended now have been changed and claim 113 has been newly added.
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.
(I) Claims 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.
(a) Claim 1 recites the limitation "Cy" in l. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "Cy" in pg. 3 of 11, line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "Cy" in pg. 3 of 11, line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "R" in pg. 3 of 11, line 11. There is insufficient antecedent basis for this limitation in the claim.
The limitations of Cy1, Cy2, and Ra2 lack antecedence due to the deletion of the limitation Ra1 in claim 1, lines 17-20; and Cy3 lacks antecedence as this is a limitation within Cy1, see claim 1, line 24.
Claims 3, 9, 26, 37-38, 43 and 67 are included in this rejection as they depend from or rely on claim 1.
(b) Claim 1, pg. 3 of 11, lines 12-14, recite with a provisio that the compound of Formula (I) is not the compound recited in line 14 on pg. 3 of 11.
The Examiner notes the compound depicted in line 14 on pg. 3 of 11 corresponds to when R2 and R4 are hydrogen within Formula (I).
Additionally, the Examiner notes hydrogen has been deleted from the Markush group of both R2 and R4 within claim 1, line 14.
Therefore, in view of these considerations, it’s unclear and indefinite whether or not R2 and R4 recite hydrogen within the Markush group as discussed above.
Claims 3, 9, 26, 37-38, 43 and 67 are included in this rejection as they depend from or rely on claim 1.
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.
(II) Claims 9, 26, 37-38, and 43 are 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.
(a) Claim 9 recites R1 and R3 are each independently selected from C1-6 alkoxycarbonyl and C1-6 alkylcarbonyl which is already recited in claim 1, lines 6-7.
Additionally, the Examiner notes claim 9 depends on claim 1, thus the recitations within claim 9 fail to further narrow the limitations already recited in claim 1 as discussed above.
(b) Claim 26 recites the compound of claim 1, wherein the compound of Formula (I) has Formula (Ia).
The Examiner notes the recited Formula (Ia) depicts hydrogen atoms which correspond to positions R2 and R4 within Formula (I) of claim 1.
However, the Examiner also notes Applicant has already deleted the hydrogen atom from the Markush group of both R2 and R4 within claim 1, line 14; and accordingly, claim 26 improperly expands the scope of claim 1.
Claims 37-38 and 43 are included in this rejection as they either depend from or rely on claim 26.
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.
Allowable Subject Matter
Claim 36 is allowed.
Claim 113 would be allowable if the objection written above is resolved.
The following is a statement of reasons for the indication of allowable subject matter: Kozakai is still the closest prior art as discussed in the non-final rejection mailed December 19, 2025. However, the teachings of Kozakai do not anticipate nor make obvious modifying the compounds of Kozakai with the restricted group wherein R1 and R3 are each independently C1-6 alkoxycarbonyl as recited in claim 36.
Claim 113 depends from claim 36.
Conclusion
Claim 36 is allowed in this action.
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.
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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/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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