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 .
Response to Remarks/Amendments
Applicant’s amendments filed March 17, 2026 have been entered. All rejections and objections not explicitly maintained herein are withdrawn in view of the claim amendments. The rejections below constitute the full set of rejections being applied to the instant claims.
With regard to the rejection of claims 1, 4 and 5 under 35 USC 102(a)(1) as anticipated by US 20110272684, the rejection is withdrawn in view of the amendment to the claims such that X1 and X2 may not simultaneously be defined as S. The prior art does not teach the amended claim limitations. Accordingly, the rejection is withdrawn.
With regard to the rejection of claims 1-3 and 5 under 35 USC 102(a)(2) as anticipated by US 11,905,300, Applicants contend that the rejection is overcome by the amendment to the Ar3 variable of the claimed chemical formula, where Ar3 must now be defined as one of Chemical Formula 2-1 and 2-2. Applicants argue that the prior art requires benzoxazole at the same position which is not encompassed by the amended formula. The examiner respectfully disagrees. In particular, Ar3 may still be (Ar11)q where Ar11 is a substituted or unsubstituted C6 to C60 aryl group, where the term “aryl” must be afforded its broadest reasonable interpretation in light of the specification. The instant specification (p.11) defines “aryl” as including a polycycle where the aryl group is fused with another cyclic group, where the definition explicitly states that the aryl (in this case, a phenyl ring) may be directly fused with a heteroaryl group (in this case, an oxazole ring). Since the benzoxazole moiety at the Ar3 position still falls within the claimed scope even as amended, the prior art compounds described in the rejection continue to anticipate the instant claims. The rejection is maintained herein.
Election/Restrictions
In accordance with the MPEP, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
As indicated in the previous action, the examiner searched the compound based on the elected species, wherein: no prior art was found on the elected species. Therefore, the scope of the search and consideration was expanded in accordance with MPEP 803.02 to also include the compounds described in the rejections set forth in the previous action. Since the previously considered scope remains unallowable, the scope of the search and examination is not extended further.
Status of Claims
Currently, claims 1-3 and 5-12 are pending in the instant application. Claims 7-12 remain 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.
Claims 1-3 and 5-6 read on the elected invention/species and are therefore under consideration herein.
Claim Objections
Claim 6 is objected to for depending on a rejected base claim, but would be allowable if rewritten in independent form.
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 11,905,300, which is available as prior art under 35 USC 102(a)(2) as of its priority date, April 23, 2021.
The prior art teaches compounds of the formula
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156
220
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, where R1 and R2 are each a benzoxazole-containing or benzothiazole-containing group, and Y and Z are each O, S, NR3 or CR4R5 (col. 2, ll. 22-47). Thus, the prior art genus overlaps with instant Chemical Formula I.
While the prior art teaches numerous anticipatory examples, compound M14 is cited as being exemplary:
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262
409
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The prior art compound reads on the instant claims where each of X1 and X2 is O; each of a, b, m and p are 0; q is 1 where Ar3 is benzoxazole; and either Ar 1 is unsubstituted naphthyl, r is 1, L3 is phenyl, and Ar2 is benzoxazole, or Ar1 is substituted phenyl, r is 0 and Ar2 is naphthyl. Similarly, compounds M15-M24 also anticipate instant Chemical Formula 1 (col. 19-26).
Since the compounds disclosed in the prior art have the same structure as the instantly claimed compound, each and every required element of the claim is taught and the claim is anticipated. Accordingly, the claims are anticipated.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alicia L. Otton whose telephone number is (571)270-7683. The examiner can normally be reached on Monday - Thursday, 8:00-6:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Fereydoun Sajjadi can be reached on 571-272-0699. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
THIS ACTION IS MADE FINAL. 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.
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/ALICIA L OTTON/Primary Examiner, Art Unit 1699