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 .
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)(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.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 22 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Valouch et al. (US 2020/0259567). Regarding claim 22, Valouch et al. disclose “the compound of the formula (Ia)
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wherein R1 and R2 have the same meaning and are selected from phenyl … substituted by one, two or three C1-C6-alkyl substituents (paragraph 173: C6-C10-aryl which is substituted with 1, 2, or 3 C1-alkyl); and R3, R4, RS and R6 have the same meaning and are phenyl which is substituted by C6 alkyl (paragraph 174: C6-C10-aryl which is unsubstituted).” Examiner notes that for R161, Valouch et al. specifically mention C6 aryl, and that it can be substituted by 1 C1-C100 alkyl, and that R163 can be C6-C10aryl which can be phenyl which can be substituted with C1-C6-alkyl. Examiner asserts that one having ordinary skill in the art could at once envisage: R1 and R2 being C6 (phenyl) because it is the simplest; the substituent of R1 and R2 being C1-alkyl because one carbon is the simplest; R3, R4, RS and R6 being C6 (phenyl) because it is the simplest; and the substituent on R3, R4, RS and R6 being C1- alkyl because one carbon is the simplest. In the event that it cannot be said that Valouch et al. disclose each moiety with sufficient specificity as to anticipate the recited moiety, Examiner asserts that one having ordinary skill in the art would have been motivated to choose each selected moiety because each one is specifically mentioned as being possible, and because the number of carbons in each instance is the simplest of the disclosed ranges.
Response to Arguments
Applicant's arguments filed 05/14/2026 have been fully considered but they are moot in view of the new grounds of rejection.
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 JOSHUA D ZIMMERMAN whose telephone number is (571)272-2749. The examiner can normally be reached Monday-Thursday, 9:30AM-6:30PM, First Fridays: 9:30AM-5:30PM.
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, Stephen Meier can be reached at (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA D ZIMMERMAN/Primary Examiner, Art Unit 2853
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