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 .
Current Status of 17/348,488
This Office Action is responsive to the amended claims and Applicant remarks of 02/19/2026. Claims 1-2,5-6,12,14-15,17-18,24-26,29,33,35-37 and 40 are pending and have been examined on the merits.
Priority
This application claims priority benefit of U.S. Provisional Application No. 63/043,535, filed June 24, 2020 and U.S. Provisional Application No. 63/162,213, filed March 17, 2021. The instant application finds support in 63/162,213 because the earlier Provisional Application does not provide support for a general linking group “A”, only alkyne linkers are described. The effective filing date of the Application is March 17, 2021.
Response to Arguments
In response to the rejections under 35 U.S.C. §112(a), Applicants have amended the scope of the compound of instant claim 1 to be commensurate with the scope of the compounds of the disclosure. These amendments are sufficient to overcome the previous enablement and improper Markush rejections of the Non-Final of 10/20/2025. These rejections are withdrawn.
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.
Claims 1-2 ,5-6, 12, 14-15, 17-18, 24-26, 29, 33, 35-37 and 40 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. The lengthy 56 page proviso makes the description of the genus incomprehensible.
In re Rose, 86 USPQ 77 (C.C.P.A. 1950) where both the board and the appellate court affirmed the examiner, states:
“negative expression is believed to be bad because it attempts to recite what applicant does not show rather than the apparatus disclosed. This expression was used in an attempt to distinguish over a reference which uses springs for the same purpose as applicant uses the hydraulic jacks. It is believed to be improper to permit claims which recite all the means for accomplishing a result except the one shown in the prior art. There is no difficulty in accurately reciting the invention applicant discloses. The Patent Statute requires applicant to distinctly claim his invention. He fails to comply with this requirement by the negative limitation which attempts to exclude one patented device without distinctly claiming his invention.”
In re Schechter and LaForge, 98 USPQ affirming the examiner for rejecting a Markush claim that attempted to proviso out the prior art, states:
“In the light of the prior art of record, the italicised portion of claim 17 is an attempt by appellants to claim their invention by excluding what they did not invent rather than by particularly and distinctly pointing out what they did invent. Further, it is clear that claim 17 is a broad generic claim in which appellants are seeking to establish a monopoly to all such cyclopentenolones, whether known or unknown, excepting the two prior art compounds which are recited in the italicised exclusionary clause of claim 17. In view of this, we think the examiner properly regarded the italicised portion of claim 17 as a negative limitation. We are also of the opinion that this renders the claim indefinite and unpatentable.”
When Rose and Schnecter are applied to claims 1-2 ,5-6, 12, 14-15, 17-18, 24-26, 29, 33, 35-37 and 40 of the instant application, because the compound of claim 1 is not positively defined, but instead is primarily characterized through an extensive series of provisos excluding over 700 compounds across 56 pages. These numerous exclusions create a combinatorial framework where it is not reasonably clear which compounds are encompassed by the claim. As such, the artisan would not be able to determine the metes and bounds of the claimed genus with reasonable certainty. The issue is the breadth of the claim, but the lack of a clear and ascertainable boundary due to the manner in which the claim is defined.
Conclusion
No claims are allowed.
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 CONNOR KENNEDY ENGLISH whose telephone number is (571)270-0813. The examiner can normally be reached Monday Friday, 8 a.m. 5 p.m. ET..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at (571)272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.K.E./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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