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 .
Response to Amendment
2. The amendments to the claims filed on February 20, 2026 have been fully considered. The amendments are sufficient to overcome the 35 USC 112 rejections. The amendments are not sufficient to overcome the 35 USC 102 rejection over RN 2030138-07-7. Below are responses to Applicant’s remarks.
The claims were previously rejected as being anticipated by RN 2030138-07-7. The compound was cited to correspond to the claims in the following manner: n=0; A=C3 cycloalkyl; m=1; Ra=C(O)(R=H). Applicants have amended the claims to remove oxo from the definition of Ra. Since the compound does not correspond to Ra=oxo it is still within the scope of the amended claims. Claims 6-9 remain rejected.
3. New grounds of rejection have been necessitated by Applicant’s amendments.
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.
4. Claims 6-9 and 22 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. The claims require a variable R in the Markush formula. However, this variable is not defined. Appropriate correction is required.
5. Claim 7 recites the limitation "Ra=oxo.” There is insufficient antecedent basis for this limitation in the claim because the claim from which claim 7 depends does not recite Ra.
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.
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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