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 .
DETAILED ACTION
This office action is a response to Applicant’s amendments/remarks after non-final rejection filed 7/6/2026.
As filed, claims 1-9 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/6/2026 has been considered by the Examiner.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Korea on 8/13/2021 (i.e. Application No. KR10-2021-0107249). It is noted that applicant has filed a certified English translation of the abovementioned foreign application on 7/6/2026. Accordingly, the Applicant acquired the benefit of foreign priority to application No. KR10-2021-0107249 filed on 8/13/2021 under 35 U.S.C. 119(a)-(d).
Response to Amendments/Remarks
Applicant’s amendments/remarks, filed 7/6/2026, with respect to claims 1-9, have been fully considered and are entered. The status for each rejection in the previous Office Action is set out below.
The § 102(a)(1) rejection of claim 1 by Marquez is withdrawn per amendments.
The § 102(a)(1) rejection of claims 1-3 by CAS729 is withdrawn because the effective filing date of claims 1-3 is now 8/13/2021 after Applicant’s submission of the certified English translation of the abovementioned foreign priority document. Because the publication date of CAS729 is 4/12/2022, which is after the abovementioned effective filing date of the instant application, CAS729 is disqualified as prior art.
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)(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 1-3 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent No. 12,573,661, hereinafter Kim.
The applied reference has a common assignee/inventor 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.
Regarding claims 1-3, Kim, for instance, teaches the compound of 5-(hydroxymethyl)-1,2-oxathiolane 2,2,-dioxide, which has the following structure. All of which meet all the limitation of these claims.
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Wherein: instant variables R1-R8 are H; and instant variable m is 0.
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(column 12, lines 45-60)
Claims 1-3 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent No. 12,686,670, hereinafter Kim1.
The applied reference has a common assignee/inventor 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.
Regarding claims 1-3, Kim1, for instance, teaches the compound of 5-(hydroxymethyl)-1,2-oxathiolane 2,2,-dioxide, which has the following structure. All of which meet all the limitation of these claims.
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Wherein: instant variables R1-R8 are H; and instant variable m is 0.
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(column 14, lines 22-37)
Claims 1-3 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2024/0014443, hereinafter Kim2.
The applied reference has a common assignee/inventor 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.
Regarding claims 1-3, Kim2, for instance, teaches the compound of 3-hydroxymethyl-1,3-propane sultone, which has the following structure. All of which meet all the limitation of these claims.
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Wherein: instant variables R1-R8 are H; and instant variable m is 0.
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(pg. 12, paragraph 0136)
Allowable Subject Matter
Claims 4-9 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.
Conclusion
Claims 1-3 are rejected.
Claims 4-9 are objected.
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.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton 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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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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