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 .
Priority
The instant application, filed May 23, 2023, claims the benefit of an effective US filing date under 35 USC 119(e) from US Provisional Application 63/347,688, filed June 1, 2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on July 24, 2023 was in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the IDS document was considered and a signed copy of the 1449 form is attached.
Restrictions/Elections
Applicant’s election without traverse of Group I, claims 1-10, drawn to a compound of formula (I) in the reply filed May 18, 2026 is acknowledged. Further, Applicant’s election of compound 1 in the same reply is also acknowledged. Applicants contend that the elected species reads on claims 1-3, 5 and 10 within the elected Group I. However, it is noted that claim 2 requires Y1 and Y2 to each be N, whereas the variables are CH in the elected species. Claim 2 does not encompass the elected species.
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 and the claims drawn to the elected species are allowable, 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 above, the Examiner searched the claimed invention based on the elected species above, wherein: the elected species was found to be allowable over the prior art. Thus, the scope of the search and examination was expanded beyond the elected species to include the compound described in the rejection under 35 USC 102 herein.
Status of Claims
Currently, claims 1-20 are pending in the instant application. Claims 2, 4, 6-9 and 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and/or species, there being no allowable generic or linking claim.
Claims 1, 3, 5 and 10 read on an elected invention and species and are under consideration herein to the extent they read on the elected species and expanded scope as described above.
Claim Objections
Claim 3 is objected to for depending on a rejected base claim but appears allowable if rewritten in independent form.
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)(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) 1, 5 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/0135111 (“the ‘111 publication”).
The ‘111 publication discloses the compound
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(see prior art claim 15) which reads on the formula I where X1 and X2 are each B(Ra)2 where Ra is phenyl; Y1 and Y2 are each CH; and Z1 and Z2 are each N. Since the compound disclosed in the prior art has the same structure as the instantly claimed compound, each and every required element of the claim is taught and 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 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALICIA L OTTON/Primary Examiner, Art Unit 1699
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