DETAILED ACTION
Response to Amendment
Applicants’ amendment filed 7/1/2026 has been entered. Currently, claims 1-7, 9 and 11-25 are pending, claims 8 and 10 are canceled and claims 11-22 are withdrawn.
Claim Rejections - 35 USC § 112
Claims 1-7, 9, 24 and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 1, 9, 24 and 25, the Examiner does not find support for the new formula (1) being claimed in the specification as originally filed, wherein this new formula is a subgenus of the original formula (1), please see MPEP 2163.05(II). Specifically, the subgenus having the new variables Y3 and Y4 along with the limitations that they “each independently represent a carbon atom or a nitrogen atom” or “represent a carbon atom” does not find support in the specification as originally filed. While each of the specific exemplary compounds at [0084]-[0092] fall within the broader subgenus of claims 1, 9, 24 and 25, this would not provide written descriptive support for the entire subgenus claimed. Further, it has been held that “just because a moiety is listed as one possible choice for one position does not mean there is ipsis verbis support for every species or sub-genus that chooses that moiety”, please see Fujikawa v. Wattanasin, 93 F.3d 1559, 1571.
Terminal Disclaimer
The terminal disclaimer filed on 7/1/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application No. 18/985034 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicants’ arguments, see Remarks, filed 7/1/2026, with respect to the previous 112(b), prior art rejections and double patenting rejection have been fully considered and are persuasive. The relevant rejections have been withdrawn.
Applicants’ arguments filed 7/1/2026 have been fully considered but they are not persuasive.
Applicants argue that the amendments to the formula (1) have overcome all rejections, and the structure was contemplated during the interview of 6/8/2026.
The Examiner respectfully disagrees and noted that while this new formula (1) has overcome the previous 112(b) and prior art rejections, it has raised a 112(a) new matter written descriptive support issue for the subgenus claimed. The discussions during the interview were about possible ways to overcome the 112(b), but the Examiner indicated that any change “would require further search and consideration”. The reason this was stated this way was because the Examiner was concerned about new matter issues and wanted an opportunity to review the amendment text, the MPEP and case law concerning subgenus limitations. After further consideration and for the reasons noted above, the subgenus now being claimed has raised 112(a) new matter issues.
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 GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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