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 .
Claims 1-8 are pending in the application.
This action is in response to applicants' amendment dated August 4, 2026. Claims 1, 3 and 7 have been amended.
Response to Amendment
Applicant's arguments filed August 4, 2026 have been fully considered with the following effect:
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections, labeled paragraph 1a), b), c), d), e), r), s), t) and u) in the last office action, which are hereby withdrawn. However, with regards to the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections, labeled paragraph 1f), g), h), i), j), k), l), m), n), o), p) and q),) of the last office action, the applicant’s amendments and remarks have been fully considered but they are not persuasive.
f-n and q) The applicants’ stated that explicit disclosure of every structural feature that a person having ordinary skill in the art would inherently understand to be encompassed by the claim language and that upon reading the claims in light of the specification, would understand the scope of the claimed subject matter with reasonable certainty. However, the claims defined ring A and ring B, each independently represent, a benzene ring or a naphthalene ring; provided that at least one of ring A and ring B is a naphthalene ring. It is herein acknowledged that the claims were read in light of the specification and the definition of ring A and ring B in the claim with the teachings of the specification do not include the substitution of the benzene ring or the naphthyl ring as claimed in the species
f) H-106 and H-126
g) H-112 and H-325
h) H-128, H-274, H-281, H-295, H-302, H-315, H-348 and H-480
i) H-144, H-151, H-267, H-280, H-291, H-300 and H-431
j) H-178, H-186, H- 190, H-193, H-203, H-205, H-206, H-207, H-208, H-219, H-229, H-244, H-265, H-306, H-318, H-349, H-357, H-363, H-373, H-378, H-393, H-395, H-428, H-437, H-447, H-460, H-471 and H-484
k) H-195 and H-212
l) H-311
m) H-316
n) H-35 and
q) H-442.
Each of these species contain substitution on ring A or ring B beyond the -L1-N(Ar1)(Ar2) which is not being claimed in the genus of Formula 1.
Claim 6 is 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 applicant regards as the invention, for reasons of record and stated above.
o) The applicants’ stated that explicit disclosure of every structural feature that a person having ordinary skill in the art would inherently understand to be encompassed by the claim language and that upon reading the claims in light of the specification, would understand the scope of the claimed subject matter with reasonable certainty. However, the claims defined Ar1 as a deuterium-substituted or unsubstituted (C6-C30) aryl or a substituted or unsubstituted (3- to 30-membered) heteroaryl selected from the group consisting of dibenzothiophenyl, dibenzofuranyl, benzothiophenyl, benzofuranyl and indolyl. It is herein acknowledged that the claims were read in light of the specification and the definition of Ar1 in the claim with the teachings of the specification do not include the substituent
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as claimed in the species H-417.
Claim 6 is 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 applicant regards as the invention, for reasons of record and stated above.
p) The applicants’ stated that explicit disclosure of every structural feature that a person having ordinary skill in the art would inherently understand to be encompassed by the claim language and that upon reading the claims in light of the specification, would understand the scope of the claimed subject matter with reasonable certainty. However, the claims defined the substituent -L1-N(Ar1)(Ar2) on the B ring not as a substituent of the R1 variable. It is herein acknowledged that the claims were read in light of the specification and the compounds of Formula 1 do not include the substitution of the R1 variable is the point of attachment of the substituent -L1-N(Ar1)(Ar2) as claimed in the species H-423.
Claim 6 is 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 applicant regards as the invention, for reasons of record and stated above.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 2) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 3) in the last office action, which is hereby withdrawn.
The applicant's filing of terminal disclaimers is sufficient to overcome the nonstatutory double patenting rejections, labeled paragraphs 4), 5), 6), 7), 8), 9), 10), 11) and 12) in the last office action, which are hereby withdrawn.
In view of the amendment dated August 4, 2026, the following new grounds of rejection apply:
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 3 and 6 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 pre-AIA the applicant regards as the invention. The following reasons apply:
Claim 3 is vague and indefinite in that it is not known what is meant by “may be the same or different” for the variables R13, R14 and R15 wherein the variables are only hydrogen.
Claim 6 recites the limitation "
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112
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" in H-22 with respect to Ar-1 or Ar2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "
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" in H-23, H-37, H-55, H-164, H-411 and H-465 with respect to Ar-1 or Ar2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "
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" in H-81 with respect to Ar-1 or Ar2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "
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" in H-97 with respect to Ar-1 or Ar2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "
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" in H-101 with respect to Ar-1 or Ar2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "
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" in H-132 and H-467 with respect to Ar-1 or Ar2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "
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" in H-194 with respect to Ar-1 or Ar2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "
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" in H-468 with respect to -L1-N(Ar-1)(Ar2). There is insufficient antecedent basis for this limitation in the claim.
Claim Objections
Claim 1 is objected to because of the following informalities: there is a period at the end of the third line of the claim indicating the end of the claim which is not so. Appropriate correction is required.
Claims 2, 4, 5, 7 and 8 are objected to as being dependent upon an objected 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
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDA L COLEMAN whose telephone number is (571)272-0665. The examiner can normally be reached Mon-Fri 10-6 (flex).
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, Jeffrey H. Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624
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