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 .
Response to Amendment
The amendments received 09/04/2025 have been entered. Claims 1, 4, 8-12, and 18-22 are examined herein. Claims 13-17 remain withdrawn. Applicant’s amendments have overcome each and every objection and the rejections under 112(b), 112(d), and Improper Markush Grouping previously set forth in the Office Action mailed 06/04/2025.
Ji et al. (WO 2020/010227 A1) has been disqualified as prior art per 35 U.S.C. 102(b)(2)(C). See page 27 of Remarks. The rejection under 35 U.S.C. 102(a)(2) has been withdrawn.
Examiner has considered Applicant’s arguments regarding the non-statutory double patenting rejection over application 17/258,339 and finds them persuasive. The rejection has been withdrawn.
New grounds for rejection are set forth as necessitated by amendment.
Information Disclosure Statement
The Information Disclosure Statement filed on 09/04/2025 is in compliance with the provisions of 37 CFR 1.97 and has been considered in full. A signed copy of list of references cited from the IDS is included with this Office Action.
Election/Restrictions
On page 28 of Remarks, Applicant has requested rejoinder of claims 13-17. However, claim 1 has not yet been found allowable. Claims 13-17 remain withdrawn, there being no allowable generic or linking claim. Examiner will consider rejoinder upon indication that claim 1 is allowable.
Claim Objections
Claim 1 is objected to because of the following informalities: "or a pharmaceutically acceptable salt thereof" is stated twice, once on the first page of claim 1 and again on the second page of claim 1, which appears to be redundant. Appropriate correction is required.
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, 4, 8-12, and 18-22 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 “wherein the substituents of an optionally substituted group comprise”. However, per MPEP 2173.05(h), a Markush grouping is a closed group of alternatives. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. The use of the term “comprise” is indefinite as it is unclear what other alternatives are encompassed.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4, 8-12, and 18-22 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.
The instant claims have been amended to recite “wherein the substituents of an optionally substituted group comprise halogen, C1-6 aliphatic, -CN, -OH, -OC1-6 aliphatic, -NH2, -NHC1-6 aliphatic, and -N(C1-6 aliphatic)2”. Examiner notes that in the Remarks filed 09/04/2025, Applicant has not specifically pointed to the location in the instant disclosure that provides support for the aforementioned amendment. See MPEP 2163.06(I). Moreover, in looking to the specification, there is no disclosure that either implicitly or explicitly supports the amendment at issue.
Applicant is invited to point to the location in the instant disclosure that supports the amendment at issue, or Applicant must delete the new matter from the claims.
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 MADELINE E BRAUN whose telephone number is (703)756-4533. The examiner can normally be reached M-F 8:30am-5:00pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.E.B./Examiner, Art Unit 1624 /BRENDA L COLEMAN/ 06/17/2026 Primary Examiner, Art Unit 1624
Prosecution Insights