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 .
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.
Election/Restrictions
Applicant's election with traverse in the reply filed on 6 February 2026, is acknowledged. The traversal is on the ground(s) that part of Examiner’s justification for Election of Species Requirement does not comport with the independent claim 1. Whether or not this is true, Applicants’ traversal is not found persuasive because the alternative species of the genus formula illustrated in instant claim 1 do not all share a common structure. For example, species within the sub-genus:
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do not share a common structure with species within the sub-genus:
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(Examiner used Applicants’ exemplary illustrated sub-genera of page 3 of the 6 February 2024 Remarks to further justify the Election of Species Requirement). The artisan could not substitute species of
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for species of
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given the distinct structures of each sub-genus; different structures result in different functions. Thus, the alternatives do not all belong to one recognized class of chemical compounds.
The requirement is still deemed proper and is therefore made FINAL.
Applicants’ provided a compliant species election of compound 10:
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(page 51 of Specification), which is a species of genus formula I of instant claim 1, wherein: R1 and R2 are each phenyl (C6 hydrocarbon group); R3, R5, and R6 are each hydrogen (H); one of R7 or R8 is methyl (C1 hydrocarbon group); and the other of R7 or R8 is isopropyl (C3 hydrocabon group); “m” and “n” are each 2; and each R4 is each H.
Applicants’ elected species has prior art under 35 USC 102(a)(2).
Because Applicants might swear behind the 102(a)(2) reference, the Examiner has also extended the Markush search to the compound:
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in order to advance compact prosecution. This compound is a species of genus formula I of instant claim 1, wherein: R1 and R2 are each phenyl (both R1 and R2 are C6aromatic hydrocarbons in which the connecting 7th carbon is replaced by one nitrogen atom (the -NH connecting the -O-(C=O)- to the phenyls); R3, R4, R5, R6, R7, and R8 are each hydrogen (H); and variables “m” and “n” are each 2.
Applicants’ elected species and the Markush search extension each read on claims 1-4.
Therefore, per Markush search practice, the Markush search will not be extended unnecessarily to additional species in this Office Action.
Current Status of 18/268,090
This Office Action is responsive to the original claims of 16 June 2023.
Original claims 1-4 have been examined on the merits.
Priority
The effective filing date is 21 December 2021.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 9 May 2025; 24 February 2025; 12 December 2024; 6 May 2024; and 11 September 2023, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claim 1 is objected to for referring to the illustration
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using “compound (A)” and “formula (1)”. While this is not indefinite (since claim 1 equates both limitations to said illustration), it is nevertheless unnecessarily duplicative. Can’t Applicants pick either “compound (A)” or “formula (1)” and consistently reference the claim 1 illustration by one of these two limitations consistently throughout all the claims?
Claims 2-4 are similarly objected to since these claims refer back to claim 1 but do not remedy the rationale underpinning the basis for objecting to claim 1.
Claim 1 is objected to for the line “with a relationship of m+n > 4 being satisfied”. This line seems a bit awkward as written. If Applicants are establishing a requirement that m+n be 4 or greater, than perhaps revise to: -- with a relationship of m+n > 4 being required [[satisfied]] -- ?
Claims 2-4 are similarly objected to since these claims refer back to claim 1 but do not remedy the rationale underpinning the basis for objecting to claim 1.
Claim Rejections - 35 USC § 112
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.
Claims 3-4 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.
Dependent claim 3 contains “alkyl”, “alkenyl”, “cycloalkyl”, “aryl”, and “heteroaryl”. While these technically could be considered “hydrocarbon groups” (claim 1 lexicon), the claim 3 is rejected under 35 USC 112(d) as not properly further limiting parent claim 1 since these “alkyl”, “alkenyl”, “cycloalkyl”, “aryl”, and “heteroaryl” groups of claim 3 have undefined ranges of carbon atoms. In that sense, these hydrocarbon embodiments are more broad than the 1-20 carbon-containing hydrocarbon groups of R1 and R2 of parent claim 1. To be further limiting, Applicants must add in a range of carbons for each of the “alkyl”, “alkenyl”, “cycloalkyl”, “aryl”, and “heteroaryl” of claim 3 that are 1-20 carbon atoms or an integer within this range (claim 1 carbon ranges).
This same problem plagues claim 4, which is similarly rejected under 35 USC 112(d). Parent claim 1 variables R3- R8 define the hydrocarbon group as containing 1-20 carbon atoms. However, the various hydrocarbon groups of claim 4 do not define the number of carbon atoms to be 1-20 or an integer within this range.
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.
Claim Rejections - 35 USC § 102 (Elected Species)
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by:
MITSUI (U.S. 2024/0067764 A1, with an effectively filed date of 21 December 2020 (from Japanese foreign priority document JP 2020-211715 [hereinafter referred to as “priority”]), which is before the instant application’s effective filing date of 21 December 2021).
The MITSUI reference is “by another”: at least inventors: Nakayama; Michiue; Jinnai; Terao; and Totani (on cover-sheet of MITSUI) are inventors of the MITSUI prior art reference but not listed as inventors in the instant application.
The applied reference has a common inventor and/or assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
The prior art reference MITSUI teaches Applicants’ elected compound:
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(page 32 of MITSUI; “priority” paragraphs [0143]-[0144]), which is a species of the “cyclic multiple-ester-group-containing compound (A)” represented by genus formula I of instant claim 1, wherein: R1 and R2 are each phenyl (an unsubstituted hydrocarbon group having 6 carbon atoms); R3, R5, and R6 are each hydrogen (H); one of R7 or R8 is methyl (hydrocarbon group with 1 carbon atom); and the other of R7 or R8 is isopropyl (hydrocarbon group with 3 carbon atoms); “m” and “n” are each 2; and each R4 is each H. This anticipates instant claims 1-4.
Claim Rejections - 35 USC § 102 (Markush search extension)
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS (American Chemical Society. Chemical Abstract Service. RN 145092-73-5. Entered into STN: 30 December 1992).
The prior art reference ACS teaches the compound:
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(see enclosed ACS prior art reference), a species of the “cyclic multiple-ester-group-containing compound (A)” represented by genus formula I of instant claim 1, wherein: R1 and R2 are each phenyl (both R1 and R2 are C6aromatic hydrocarbons in which the connecting 7th carbon is replaced by one nitrogen atom (the -NH connecting the -O-(C=O)- to the phenyls), which alternatively could also be interpreted as “a substituted alkyl group” of claim 3); R3, R4, R5, R6, R7, and R8 are each hydrogen (H); and variables “m” and “n” are each 2. This anticipates instant claims 1-4.
Conclusion
No claims are presently allowable as written.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew D Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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