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 .
Status of Claims
Claims 16-32 are pending.
Claims 20-21, 23-25, 27-28, and 30-32 are preliminarily withdrawn
Claims 17-19, 22, and 29 are preliminarily objected to.
Election/Restrictions
Applicant’s election of Group I, corresponding to claims 16-29, and the compound species (2Z)-6-(3-fluoro-4- hydroxyphenyl)-2-(hydroxyimino)-2,3-dihydro-1H-inden-1-one (CIDD-0149897) (on page 28 of the specification) in the reply filed on 4/23/2026 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)).
The elected species reads upon claims 16-19, 22, 26, and 29.
Claims 20-21, 23-25, 27-28, and 30-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/23/2026.
Expansion of Election of Species Requirement
As indicated above, the elected species reads upon claims 16-19, 22, 26, and 29. The elected species has been searched and is deemed to be free of the prior art and non-obvious. Accordingly, the search has been expanded as called for under current Office Markush practice - a compound-by-compound search - to include a single additional species (M.P.E.P. § 803.02).
That species is shown below:
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wherein, in Formula (I), R1 and R2 is hydrogen, X is H2, and n is 1, which reads on claims 16 and 26. A rejection to those claims follows.
Since the search has not been expanded beyond the single additional species identified above, claims 17-19, 22, and 29 which are directed to the elected species but which do not include the single additional species, are preliminarily objected to as indicated below, and have not been further examined.
Specification
The table of exemplary compounds on pages 28-34 of the specification are of poor quality. Examiner asks for this table to be resubmitted in the next response.
Claim Rejections - 35 USC § 102
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.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16 and 26 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hatakeyama, J., et. al. (US Publication No. US 2016/0054652 A1; Published 02/25/2016).
Hatakeyama teaches the compound shown below on Page 40, as Oxime 11.
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Oxime 11 teaches Applicant’s Formula (I) in claim 16, as shown below:
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wherein R1 and R2 are hydrogen, X is H2, and as further required by claim 26, n is 1. As such, claims 16 and 26 are anticipated by the prior art.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OROD MOTEVALLI whose telephone number is (571)272-6026. The examiner can normally be reached Monday - Friday 10:00AM - 6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L Clark can be reached at (571) 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OROD MOTEVALLI/Examiner, Art Unit 1628
/AMY L CLARK/Supervisory Patent Examiner, Art Unit 1628
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