-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 .
Applicants’ response dated May 19, 2026 is acknowledged.
Priority
This application is a 371 of PCT/EP2023/050891 filed on 01/16/2023, which claims foreign priority in EP22305043.6 filed on 01/17/2022.
Claim Status
Claims 1, 3-10, 12-17, 32, and 33 are pending. Claims 2, 11, 13-16, and 18-31 were cancelled. Claims 32 and 33 were newly added. Claims 6, 9, 14-16 and 32 are withdrawn. Claims 1, 3-5, 7, 8, 10, 12, 13, 17, and 33 are examined.
Election/Restriction
Applicant’s election without traverse of Group I (Claims 1, 3-10, 12-17, 32, and 33), drawn to a compound of Formula I in the reply filed on May 19, 2026, is acknowledged.
Applicant’s election without traverse of Compound VII as a species of the compound of Formula I, is acknowledged. Claims 1, 3-5, 7, 8, 10, 12, 13, 17, and 33 read on the elected species.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 6, 9,14-16, and 32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Response to the restriction requirement of February 19, 2026 was timely filed.
Claims 1, 3-5, 7, 8, 10, 12, 13, 17, and 33 are examined on the merits.
The elected compound was searched and no applicable prior art was found. In accordance with MPEP 804, the examiner has moved on and examined remaining species of compounds of formula (I) in claim 17 and no applicable prior art was found.
The examiner has selected the compound of formula (I) in which R1 is linear saturated C12 hydrocarbon, Z is –(CH2CH2O)4-, B is -O-, X is oxygen, n is 2, and A is 6-membered saturated heterocyclic radical comprising 4 carbon atoms and 2 nitrogen atoms, and substituted with C1 alkyl, which is encompassed by claims 1, 4, 5, 7, 8, 10, 12, and 13, and an action on this species follows.
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.
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.
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.
Claims 1, 3-5, 7, 8, 10, 12, 13, and 17 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.
In claim 1, the chemical structure of the compound of formula I is indefinite because the carbon atom C in “CX” is not balanced as drawn. In view of dependent claims, it is apparent that applicant intended for the carbon atom in -CX- moiety to be double bonded to X and single bonded to the B variable and single bonded to the methylene moiety. The correct notation for carbon double bonded to X is -C(X)-. Appropriate correction is required.
The chemical structure NR2R3-Alk-Y- is indefinite when Y is a nitrogen atom because it does not have a balanced valance. Nitrogen requires three covalent bonds to be balanced and the nitrogen atom in the claimed structure has only two covalent bonds and requires a third covalent bond complete its valance.
Claim 3 recites a group of chemical structures from which the R1 variable is selected. The claim is indefinite because none of the structures indicate a point of attachment of the R1 variable to Z.
Claims 4, 5, 7, 8, 10, 12, 13, and 17 are rejected as indefinite because the claims depend from an indefinite base claim and contain indefinite limitations.
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, 5, 7, 8, 10, 12, and 13 are rejected under 35 U.S.C. 102(a) as being anticipated by Acosta (WO 2014/105764 A1 Published July 3, 2014 – of record in IDS dated 04/30/2025).
The claims encompass a compound of formula (I) in which R1 is linear saturated C12 hydrocarbon, Z is –(CH2CH2O)4-, B is -O-, X is oxygen, n is 2, and A is 6-membered saturated heterocyclic radical comprising 4 carbon atoms and 2 nitrogen atoms, and substituted with C1 alkyl.
Acosta discloses a compound of the formula:
PNG
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129
712
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Greyscale
(Example 1 paragraphs 00192-00193).
Claims 1 is anticipated by Acosta because the claimed genus encompasses Acosta’s compound when R1 is linear saturated C12 hydrocarbon, Z is –(CH2CH2O)4-, B is -O-, X is oxygen, n is 2, and A is 6-membered saturated heterocyclic radical comprising 4 carbon atoms and 2 nitrogen atoms, and substituted with C1 alkyl.
Claim 4 is anticipated when m is 4, r is 0, and q is 0.
Claim 5 is anticipated when B is oxygen.
Claim 7 is anticipated when X is oxygen.
Claim 8 is anticipated when n is 2.
Claim 10 is anticipated when A is 6-membered saturated heterocyclic radical comprising 4 carbon atoms and 2 nitrogen atoms, and substituted with C1 alkyl.
Claim 12 is anticipated when R4 is C1 alkyl, p is 0 (R12 is absent), R5, R6, R8, and R9 are each -CH2-, and R7 is N.
Claim 13 is anticipated when r 0 and m is 4.
Conclusion
Claim 33 is allowed. Claims 1, 3-5, 7, 8, 10, 12, 13, and 17 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alma - Pipic whose telephone number is (571)270-7459. The examiner can normally be reached M-F 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached on 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALMA PIPIC/Primary Examiner, Art Unit 1617
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