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 in the reply filed on 20 January 2026, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicants provided a compliant species election of compound 101:
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, as a species of genus formula G1 of instant claim 1, wherein R2 and R7 are each a t-butyl (branched C4alkyl); R1, R3, R4, R5, R6, R8, R9, R10, R11, R12, R13, R14, and R16 are each hydrogen (H); and R15 represents
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.
This elected species is free of the prior art.
The Examiner extended the Markush search to the full scope of genus formula G1 of instant claims 1 and 18 but did not find any prior art.
Applicants provided a compliant species election of compound 100:
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, as a species of genus formula G3 of instant claim 9, wherein: R2 and R7 are each a t-butyl (branched C4alkyl); R1, R3, R4, R5, R6, and R8 are H.
This elected species is free of the prior art.
The Examiner extended the Markush search to the full scope of genus formula G2 and G3 of instant claim 9 but did not find any prior art.
Therefore, the Election of Species Requirement of 19 November 2025, is withdrawn, as all claims are free of the prior art.
All claims have been examined on the merits.
Current Status of 18/305,609
This Office Action is responsive to the amended claims of 20 January 2026.
Claims 1-20 have been examined on the merits. Claims 1-3 and 18-19 are currently amended. Claims 4-17 and 20 are original.
Priority
The effective filing date is 24 April 2023.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11 August 2023, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
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 4, 13, and 19 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 4 recites the limitation "at least one deuterium is included". There is insufficient antecedent basis for this limitation in the claim.
As drafted, the limitation "at least one deuterium is included" renders the metes and bounds of claim 4 undefined (hence rendering claim 4 indefinite under 35 USC 112(b)). The artisan does not know where antecedent basis for “deuterium” is found within parent claim 1. In fact, claim 1 is silent as to “deuterium”. Similarly, claim 13 is also rejected under 35 USC 112(b) indefiniteness since “deuterium” does not have antecedent basis within parent claim 9.
The term “substantially” in claim 19 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
As drafted, “substantially aligned” within claim 19 renders the metes and bounds of claim 19 undefined (hence rendering claim 19 indefinite under 35 USC 112(b)). Neither the Specification nor the claims define the standard to ascertain by what requisite degree one of ordinary skill is to measure “substantially aligned”. Applicants can strike “substantially aligned” to render moot this rejection.
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 4 and 13 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 4, drawn to the limitation "at least one deuterium is included”, does not properly further limit parent claim 1, which is silent as to “deuterium”. Therefore, claim 4 is rejected under 35 USC 112(d). Similarly, claim 13 is also rejected under 35 USC 112(d) since “deuterium” is not found within parent claim 9.
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.
Conclusion
Claims 4, 13, and 19 are not presently allowable as written.
Claims 1-3, 5-12, 14-18, and 20 are presently allowable as written.
There is no known prior art reference that either teaches or anticipates a compound of genus formula G1 from instant claims 1 and/or 18.
The reference NIPPON (U.S. 2022/0310937 A1, referenced in IDS of 11 August 2023), discloses the compound:
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(page 24), wherein R1, R2, R3, R4, R5, R6, R7, R8, R9, R11, R12, R13, R14, and R16 are each hydrogen (H); and R10 and R15 represents
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However, NIPPON is a close art but not a prior art reference because (1) the compound also contains a heterocycle
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at R10 which is not permitted by instant claims 1 and 16. While claims 1 and 16 permit a cycloalkyl and a heteroaryl (closest rings to g1-1, above), the extra g1-1 is neither a cycloalkyl nor a heteroaryl. Also, (2) the compound, above, is really the only compound one could immediately envisage from NIPPON.
This exemplary compound is also disclaimed by instant claim 9 as it only contains hydrogen atoms at R1, R2, R3, R4, R5, R6, R7, R8.
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
Prosecution Insights