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 .
According to paper filed on May 13, 2026, the applicants have canceled claim 73 and furthermore, have amended claims 1, 32, 118 and 119.
Claims 1, 15, 21, 25, 32, 34, 40-42, 58-59, 62, 69, 72, 81 and 118-119 are pending in the application.
Response to Arguments
Applicant's arguments filed May 13, 2026 have been fully considered but they are not persuasive regarding some indefiniteness rejection of claim 119 and ODP rejection. Regarding indefiniteness rejection of claim 119, the applicants argue that according to definition of hydrogen in the specification, it can represent isotope deuterium also. The examiner agrees with this. However, variable Rx1 can’t represent H according to its definition in claim 1. Therefore, compounds 715, 717, 741 and 807 in claim 119 lack an antecedent basis. In regard to ODP rejection, the applicants argue that the definition of variable Rx1 is amended to delete halogen. This is not true. There are two separate formulae for the bicyclic ring. The applicants have did delete the value of variable Rx1 as halogen in the 2nd formula only. The first formula where 7-membered ring contains O as ring atom, variable Rx1 can still represent halogen.
Conclusion
The indefiniteness rejection of claim 119 under 35 U.S.C. 112, 2nd paragraph is maintained.
The ODP rejection of claims 1, 15, 21, 25, 32, 34, 40-42, 58-59, 62, 69, 72, 81 and 118-119over claims of PAT 12,139,487 is maintained.
NEW GROUNDS OF REJECTION
Claim Rejections - 35 USC § 112
7. 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.
Claims 81 and 119 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.
Claim 81 depends upon claim 73 which is canceled.
Claim 119 recites the limitation "alkoxy for the value of variable Rx1 (see compound 344)" in claim 1. There is insufficient antecedent basis for this limitation in the claim.
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 CHARANJIT AULAKH whose telephone number is (571)272-0678. The examiner can normally be reached Monday-Friday 7:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621
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