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 .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted January 16, 2025 was in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS document was considered. A signed copy of form 1449 is enclosed herewith.
Election/Restrictions
3. Applicant's election with traverse of Group I in the reply filed on July 13, 2026 is acknowledged. The traversal is on the ground(s) that the prior art cited to break unity in the lack of unity requirement no longer anticipates the amended claims. This is correct; however, the claims still lack unity because the special technical feature, compounds of formula G1, are anticipated by the prior art references applied herein in the rejections below. As such, the claims lack unity of invention. Applicants arguments are not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
4. In accordance with the MPEP 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
5. As per MPEP 803.02, the Examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species
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, wherein A1 to A3 are N, R1 is phenyl, R2 is phenyl, R3 is dibenzo[f,h]quinoxalyl group, R4 is phenanthryl group, R5 to R7 are H, makes a contribution over the prior art of record. Therefore, according to MPEP 803.02: should the elected species appear allowable, the search of the Markush-type claim will be extended. If art is found on a non-elected species, the Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration. Since art was found on a non-elected species, subject matter not embraced by the elected species is therefore withdrawn from further consideration. It has been determined that the entire scope claimed is not patentable.
Status of Claims
6. Claims 11-12 and 14-26 are pending in the instant application. Applicant states that 11-12 and 14-26 are readable on the elected species but various claims that Applicant stated are readable on the elected species include a limitation wherein some positions can be a deuterium atom but none of the positions in the elected species include a deuterium atom. Therefore, those claims are also withdrawn. Claims 12, 15, 17, and 23-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention and species. Therefore, claims 11, 14, 16, and 18-22 read on an elected invention and species and are therefore under consideration in the instant application.
Claim Objections
7. Claims 11 and 14 are objected to containing blurry structures. Appropriate correction is required.
8. Claims 16, 18 and 22 are objected to for depending on a rejected base claim.
Claim Rejections - 35 USC § 112
9. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
10. Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 14 recites the limitations for variable R4 which fall outside the scope of ‘subsituted or unsubstituted phenanthyl group’ in the claim from which claim 14 depends. Groups G1-2, G1-4, G1-5, and G1-6 fall outside the scope of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
11. 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 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.
12. 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.
13. Claims 11 and 19-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAplus Registry Number: RN 2081939-18-4. [Database Registry Chemical Abstracts Service, Columbus, Ohio, Accession No. RN 2081939-18-4, Entered STN: 07 Mar 2017].
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RN 2081939-18-4 anticipates the instant claims wherein A1, A2, and A3 are N, R1 and R2 are phenyl, R3 is phenanthryl, R4 is a condensed ring of 5 rings comprising nitrogen as an element forming the ring.
Registry number 2081939-18-4 is available as prior art as of 07 Mar 2017, the day it was indexed into the CAplus database.
See MPEP 2128: ELECTRONIC PUBLICATIONS AS PRIOR ART Status as a "Printed Publication" An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) Since this date represents the date that each compound entered the CAPlus database on STN, this represents the date that each compound was made accessible to the public.
The aforementioned compounds anticipate the instantly claimed compounds: It is further noted that for the purposes of determining if a reference is a “printed publication” for the purposes of 102(b), MPEP 2128 states the following:
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where “prior art disclosures…on an on-line database are considered to be publicly available as of the date the item was publicly posted.” Since each of the database entries above lists the date that each compound was entered into the on-line database, the compounds were made publicly available as of that date in each citation, and the claims are anticipated.
Conclusion
14. No claims are allowed.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha Shterengarts whose telephone number is (571)270-5316. The examiner can normally be reached on Monday thru Thursday 9-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMANTHA L SHTERENGARTS/Primary Examiner, Art Unit 1623
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