DETAILED ACTION
Claims 1-20, submitted on November 10, 2023, are pending in the application. Claims 12-19 are withdrawn, and claims 1-11 and 20 are rejected or objected to for the reasons set forth below. No claim is allowed.
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 Leahy-Smith America Invents Act (AIA ), Public Law 112-29, 125 Stat. 284. 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.
Election/Restrictions
Applicant’s election with traverse of Group I, drawn to a compound of formula (A), formula (B), or formula (C), in the reply filed on April 14, 2026 is acknowledged. Upon reconsid-eration, claim 20, drawn to compounds (II) through (IX), is hereby rejoined with Group I. The traversal is on the grounds that the Groups “are so closely related that no serious burden exists.” See applicant’s remarks, submitted April 14, 2026, at p. 3. The examiner disagrees inasmuch as the references discussed hereinbelow to not appear to represent the closest prior art with respect to Group II. Further searching of the prior art will therefore be required to determine patentability of the subject matter of Group II, which presents a serious search or examination burden. Applicant is reminded, however, that Group II would be considered for rejoinder as discussed in MPEP 821.04. The requirement is still deemed proper and is therefore made FINAL. Claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement.
Upon reconsideration, the requirement for a species election in the communication mailed on February 24, 2026 is hereby withdrawn. Applicant’s election thereof in the response submitted on April 14, 2026 is therefore moot.
Claim Objections
Claims 1, 6, 10, and 20 are objected to because of the following informalities.
In claims 1 and 6, at least two different substituents are named “R.” They should be renamed (e.g., “R¹,” “Rˣ,” or something similar) to avoid confusion.
In claims 10 and 20, two separate and distinct compounds are labelled “(II).” At least one of them should be renumbered or renamed.
Appropriate correction is required. Applicant is reminded that amendment of the claims may necessitate a corresponding amendment to the written description of the specification for consistency.
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.
Claims 1-9 and 11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inven-tor regards as the invention.
The substituent X’ is undefined.
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.
Claims 1-4 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tohda et al., J. Chem. Soc., Chem. Comm. 1975;2:54-55.
Tohda discloses (see p. 55) trans-[(PEt₃)₂,PdI{C(CO₂Me)=C(CO₂Me)-(Me)}], which is a compound according to formula (A), wherein Y is iodide, each Z is COOMe, X is methyl, and L/L’ are monodentate phosphine ligands. The CCl₄ composition described in the reference appears to be within the meaning of instant claim 11 (or at least applicant’s specification does not include any definition of “pharmaceutically acceptable excipient” that would exclude such a composi-tion). The statement “for use as a medicament” appears to be an inherent property of the com-pound and is therefore not accorded patentable weight for the reasons discussed in MPEP 2112. The subject matter of claims 2-3 has not been accorded patentable weight for the same reasons.
Claims 1-4 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated Canovese et al., Dalton Trans. 2009;43:9475-85.
See the compounds in Scheme 2 at p. 9477.
Claims 1-4 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roe et al., JCS, Dalton Transactions: Inorganic Chemistry 1975;2:125-32.
See Compound X at p. 128.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Canovese1 et al., Organometallics 2005;24:3297-308.
See the compounds in Scheme 1 and Scheme 2 at p. 3298, as well as the compounds in Table 1 at p. 3299. The compound in Scheme 1 wherein the ligand is DPPE, X is chlorine, and Z is COOMe is the same as compound (X) in claim 10, and it meets the limitations of claims 4-9.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Theodore R. Howell whose telephone number is (571)270-5993. The exam-iner can normally be reached Monday - Thursday, 8:00 am - 7:00 pm (Eastern Time). 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, 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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THEODORE R. HOWELL
Primary Examiner
Art Unit 1628
/THEODORE R. HOWELL/Primary Examiner, Art Unit 1628
May 14, 2026
1 Cited in applicant’s information disclosure statement submitted on November 10, 2023.
