DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 4, 2026 has been entered.
Claim Objections
3. Claim 8 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.
Response to Amendment
4. The amendments to the claims filed on May 4, 2026 have been fully considered. 5. The amendments to the claims filed on May 4, 2026 are sufficient to overcome the 35 USC 103 rejection over RN 36735-37-2 which is withdrawn. The amendments are not sufficient to overcome the 35 USC 102 rejection over RN 21282-90-6 which is maintained. Below are responses to Applicant’s remarks.
The claims were previously rejected as being anticipated by RN 21282-90-6. The reference teaches a compound and composition thereof in water which correspond to the present claims in the following manner: R1=R2=R6=R7=H, R3=NR6R7. Applicants have amended claims 2, 3 and 7 such that R7=H is no longer claimed. However, claims 1, 6 and 10-12 include the embodiment of R7=H. Therefore, this rejection is withdrawn for claims 2, 3 and 7 and maintained for claims 1, 6 and 10-12.
6. The claim amendments necessitated a new ground of rejection under 35 USC 112.
7. Claim 8 remains objected to for being dependent on a base rejected claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
8. Claims 1-7 and 9-12 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims have been amended to include the proviso that R3 cannot be morpholiny-4-yl if R1 and R2 are hydrogen. The subgenus delineated by this proviso was not described in the original disclosure. Moreover, the compounds do not sufficiently support this subgenus. For this reason, the proviso adds new matter to the claims. Appropriate correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN JAE YOO whose telephone number is (571)272-9074. The examiner can normally be reached Mon-Fri 8-5.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUN JAE YOO/Primary Examiner, Art Unit 1621
Prosecution Insights