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 . Claims 97-107 filed June 25, 2026 are currently pending.
Response to Amendment
Applicant’s amendments, filed 06/25/2026 are acknowledged. Claims XXX have been canceled in their entirety. Formula (Ia) in claim 97 has been amended as follows.
Claim 101 has been put into independent form.
Withdrawn Rejection(s)
In view of Applicant’s amendments to claim 97 and submission of claim 101 in independent form, the pending 35 U.S.C 112 paragraph B rejections of record are withdrawn. In addition, in view of Applicant’s amendments, the 35 U.S.C 102(a)(1) rejection of claims 97, 103-104 and 107 by Chung (KR10-101292478 filed 07/31/2013) are withdrawn as CH3 is no longer a substituent for Y1-Y5 and compounds of Chung 57-60 all comprise CH3 at Y2. Thirdly, in view of Applicant’s amendments, the 35 U.S.C 102(a)(1) rejection of claims 97, 103-104 and 107 by Cagnoli-Bellavita are withdrawn as X3 and X4 of compound XIII and XIV form a pyrazole ring and not either an imidazole or triazole ring as required by the claims.
Applicant's arguments, filed 06/25/2026 have been fully considered. Rejections and/or objections not reiterated from the previous Office Action are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and objections presently being applied to the instant application.
NEW REJECTION NECESSITATED BY AMENDMENT
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.
Claim(s) 97 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fries et al (Justus Liebigs Annalen der Chemie Vol. 527 pages 60-71. Published 1936; abstract provided).
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Fries teaches the above compound corresponding to CAS Registry number 855281-01-5 which reads on Formula (Ia) as follows: X2 and X3 are each independently OH, X1 and X4 are each independently H and Y1-Y5 are each independently H. Said compound does not read on caveat (a), (b) or (c) as neither Y3 nor Y4 are OH, nor do X2 and X3 form a five membered ring as required in caveat (a) and (b).
Conclusion
Claims 97 is rejected. Claims 98-100, 102-104 and 106-107 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. Claims 101 and 105 are allowed.
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 GEORGE W KOSTURKO whose telephone number is (571)270-5903. The examiner can normally be reached M-F 9:00-5:30.
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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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/GEORGE W KOSTURKO/Primary Examiner, Art Unit 1621
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