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 with traverse of group I, claims 1-6 and 19, in the reply filed on December 23, 2025 is acknowledged. The traversal is on the ground(s) that the prior art doesn’t teach the amended claim 1. This is not found persuasive because the amended structure is known in the art based on the references applied below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-18 and 20 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 23, 2025.
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 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rumble et al. (The Journal of Chemical Physics, 148, 193801, 2018).
Considering Claims 1 and 6: Rumble et al. teaches a compound of the formula
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306
156
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where the anion is hexafluorophosphate (pg. 193801-1-2).
Claims 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rumble et al. (The Journal of Chemical Physics, 148, 193801, 2018).
Considering Claim 4: Rumble et al. teaches a compound of the formula
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306
156
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where the anion is hexafluorophosphate (pg. 193801-1-2).
Claims 1, 6, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chupakhin et al. (Chemistry of Heterocyclic Compounds, 2019, 55(1), 956-963).
Considering Claims 1, 6, and 20: Chupakhin et al. teaches a compound of the formula
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82
104
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, where X is
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56
76
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and R is F (Figure 1, Abstract).
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chupakhin et al. (Chemistry of Heterocyclic Compounds, 2019, 55(1), 956-963).
Considering Claim 4: Chupakhin et al. teaches a compound of the formula
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82
104
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, where X is
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56
76
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and R is F (Figure 1, Abstract).
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goubitz et al. (Acta Cryst. 1990, C46, 1081-1084).
Considering Claim 4: Goubitz et al. teaches 10-methyl-9-(4-methylphenyl)acridinium perchlorate, which reads on the compound of formula (I), where R3 is methyl.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 are rejected under 35 U.S.C. 103 as being unpatentable over Rumble et al. (The Journal of Chemical Physics, 148, 193801, 2018).
Considering Claims 3: Rumble et al. teaches a compound of the formula
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306
156
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where the anion is hexafluorophosphate (pg. 193801-1-2).
Rumble et al. does not teach the phenyl group as being substituted at the position of R1 in formula II. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See MPEP § 2144.09. It would have been obvious to a person of ordinary skill in the art to have prepared a compound with the phenyl substituent at the R3 position based on the compound of Rumble et al., and the motivation to do so would have been, a person of ordinary skill in the art would expect the compounds to function similarly based on the close structural similarity.
Claim 5 are rejected under 35 U.S.C. 103 as being unpatentable over Rumble et al. (The Journal of Chemical Physics, 148, 193801, 2018).
Considering Claims 5: Rumble et al. teaches a compound of the formula
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306
156
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where the anion is hexafluorophosphate (pg. 193801-1-2).
Rumble et al. does not teach the phenyl group as being substituted at the position of R1 in formula IV. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See MPEP § 2144.09. It would have been obvious to a person of ordinary skill in the art to have prepared a compound with an additional phenyl substituent at the R3 position based on the compound of Rumble et al., and the motivation to do so would have been, a person of ordinary skill in the art would expect the compounds to function similarly based on the close structural similarity.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Chupakhin et al. (Chemistry of Heterocyclic Compounds, 2019, 55(1), 956-963).
Considering Claim 3: Chupakhin et al. teaches a compound of the formula
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82
104
media_image2.png
Greyscale
, where X is
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56
76
media_image3.png
Greyscale
and R is F (Figure 1, Abstract).
Chupakhin et al. does not teach the phenyl group as being substituted at the position of R1 in formula II. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See MPEP § 2144.09. It would have been obvious to a person of ordinary skill in the art to have prepared a compound with the fluorine substituent at the R3 position based on the compound of Chupakhin et al., and the motivation to do so would have been, a person of ordinary skill in the art would expect the compounds to function similarly based on the close structural similarity.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Chupakhin et al. (Chemistry of Heterocyclic Compounds, 2019, 55(1), 956-963).
Considering Claim 5: Chupakhin et al. teaches a compound of the formula
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media_image2.png
82
104
media_image2.png
Greyscale
, where X is
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media_image3.png
56
76
media_image3.png
Greyscale
and R is F (Figure 1, Abstract).
Chupakhin et al. does not teach the phenyl group as being substituted at the position of R1 in formula II. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See MPEP § 2144.09. It would have been obvious to a person of ordinary skill in the art to have prepared a compound with an additional fluorine substituent at the R3 position based on the compound of Chupakhin et al., and the motivation to do so would have been, a person of ordinary skill in the art would expect the compounds to function similarly based on the close structural similarity.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767