*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 September 10, 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, 4-10, 12-17, 32, and 33 are pending. Claims 2, 3, 11, 13-16, and 18-31 were
cancelled. Claims 6, 9, 14-16 and 32 are withdrawn. Claim 1 was amended. Claims 1, 4, 5, 7, 8, 10, 12, 13, 17, and 33 are examined.
Election/Restriction
The search was extended to the remaining species of compounds of formula I in claims 1, 4, 5, 7, 8, 10, 12, 13, and 17.
Withdrawn Claim Rejections - 35 USC § 112
Rejections of claims 1, 3-5, 7, 8, 10, 12, 13, and 17 are withdrawn because claim 1 was amended to overcome the grounds of rejection and claim 3 was canceled.
Withdrawn Claim Rejections - 35 USC § 102
Rejections of claims 1, 4, 5, 7, 8, 10, 12, and 13 as being anticipated by Acosta (WO 2014/105764 Al Published July 3, 2014 – of record in IDS dated 04/30/2025) are withdrawn because claim 1 was amended by deleting the R1 variable that is met by Acosta.
New Claim Rejections – 35 USC § 112
Necessitated by Amendment
The following is a quotation of 35 U.S.C. l 12(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, 4, 5, 7, 8, 10, 12, 13, and 17 are rejected under 35 U.S.C. l 12(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 was amended to require the limitations of claim 3, and further recites that each of R1a to R1jj is bonded to Z through the open valance depicted therein. The claim is indefinite because none of the structures indicate a point of attachment of the R1 variable to Z. For the purpose of searching and applying prior art, the point of attachment of the compounds R1a to R1jj to Z is interpreted and given the meaning consistent with the specification and claim 17.
In the remarks dated September 10, 2026, applicant stated that the R1 groups of present claim 1 are expressly defined as being bonded to Z through the open valance depicted therein on the lefthand side of each of the structures, such that the point of attachment of each R1 group is unambiguous.
The argument is not persuasive because an open valance is not depicted in any of the recited structures and a person skilled in the art cannot readily determine how each structure is attached to the Z variable. A claim is required to be definite and complete in itself. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The examiner acknowledges that the specification teaches species of compounds of formula I from which it is apparent how the R1 variable attaches to the Z variable, however the claim has to be clear on its own and currently the point of attachment on the R1 variable is unknown.
Grounds of rejection may be obviated by amending each structure by placing a dotted or a squiggly line through a bond at which the attachment between R1 and Z occurs.
For example:
PNG
media_image1.png
166
272
media_image1.png
Greyscale
wherein
PNG
media_image2.png
40
37
media_image2.png
Greyscale
represents a bond which covalently bonds the R1 variable to the Z variable.
Alternatively, ground of rejection may be obviated by placing an asterisk near the atom to which the Z variable is covalently bonded.
For example:
PNG
media_image3.png
171
240
media_image3.png
Greyscale
wherein * represents the point at which the Z variable covalently bonds to the R1 variable.
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.
Conclusion
Claim 33 is allowed. Claims 1, 4, 5, 7, 8, 10, 12, 13, and 17 are rejected.
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.
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/ALMA PIPIC/Primary Examiner, Art Unit 1617
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