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 .
DETAILED ACTION
Status of 18/725,593
Claims 1-2, 4, 6-8, 17-21, 26-28, 35, 37, 40, 43-44, and 52 are currently pending.
Priority
Instant application 18/725,593, filed 6/28/2024, claims priority as follows:
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Support for the instant claims is found in the priority application.
Information Disclosure Statement
All references from the IDS’s submitted on 7/30/2024, 5/1/2025, 12/10/2025, and 1/15/2026 have been considered unless marked with a strikethrough.
Objection to the Specification
The specification is objected to because it contains pixelated and illegible images. Specifically, Scheme 12 on page 45, and Schemes 13, 14, and 15 on page 46 are unable to be interpreted. Appropriate correction is required.
Objection to Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because Figure 10 is not able to be interpreted as it is pixelated and illegible. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Election/Restriction
Applicant’s election of Group I, claims 1-2, 4, 6-8, 17-21, 26-28, 35, 37, 40, and 43, drawn to compounds and compositions of Formula I, in the reply filed 8/13/2026 is acknowledged. Applicant’s election of Compound 11:
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in the same reply, is also 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)).
Examination will begin with the elected species. In accordance with 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. 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 examined again. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during further examination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final.
The elected species was searched, and no prior art was identified. The search was then expanded to compounds where R1 is H, Z1 is CHR2, where R2 is H, x is 0, Z2 is CHR3, where R3 is H, and Z3 is O, and compounds where R1 is H, Z1 is NR4, where R4 is H, x is 1, Z2 is CHR3, where R3 is H, and Z3 is O. Claims 1-2, 4, 6-8, 20, and 40 read on the expanded species. Claims 17-19, 21, 26-28, 35, 37, 43-44, and 52 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species and/or group, there being no allowable generic or linking claim. In the interest of compact prosecution, the Examiner notes that though claim 37 does not read on the expanded species, claim 37 is dependent on a cancelled claim.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-2, 4, 6-8, and 20 are 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.
Claim 1 recites that R2 and R3 can be alkyl-OR5 and alkyl-SR6, where R5 and R6 are each, independently, H, CHF2, CF3, unsubstituted or substituted alkyl, unsubstituted or substituted alkynyl, or unsubstituted or substituted cycloalkyl. It is unclear where alkyl-OR5 and alkyl-SR6 attach to the carbon when they are R2 or R3. Dependent claims 2, 4, 6-8, and 20 do not resolve the issue and are therefore also rejected.
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.
Claims 1-2, 4, 6, 8, 20, and 40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (PubChem CID 69731907, Created 2012-12-01, Accessed 2026-08-24, cited in the IDS of 7/30/2024, herein after “PubChem ‘907”).
The reference PubChem ‘907 discloses the following compound:
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Which anticipates a compound of instant Formula I:
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When R1 is H, Z1 is CHR2, where R2 is H, x is 0, Z2 is CHR3, where R3 is H, and Z3 is O. Thus, PubChem ‘907 anticipates claims 1-2, 4, 6, 8, 20, and 40.
Claims 1-2, 7-8, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (PubChem CID 6905899, Created 2012-11-30, Accessed 2026-08-24, cited in the IDS of 7/30/2024, herein after “PubChem ‘899”).
The reference PubChem ‘899 discloses the following compound:
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Which anticipates a compound of instant Formula I:
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When R1 is H, Z1 is NR4, where R4 is H, x is 1, Z2 is CHR3, where R3 is H, and Z3 is O. Thus, PubChem ‘899 anticipates claims 1-2, 7-8, and 20.
Conclusion
Claims 1-2, 4, 6-8, 20, and 40 are rejected. Claims 17-19, 21, 26-28, 35, 37, 43-44, and 52 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kendall Heitmeier whose telephone number is (703)756-1555. The examiner can normally be reached Monday-Friday 8:30AM-5:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.N.H./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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