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 .
DETAILED ACTION
RESPONSE TO ELECTION/RESTRICTION
Applicant’s election of group I, drawn to compounds of the formula I and simple compositions thereof and elected species:
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464
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in the reply filed on 12/3/2025 is acknowledged. The examiner notes Applicant did not state which claims embrace this elected species. However for the sake of compact prosecution the examiner determined that claims 1, 2, 5-16, 19, and 24 read on the elected species. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
The requirement is still deemed proper and is therefore made FINAL.
Claims 3-4,17-18, 20, 31 and 36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 1, 2, 5-16, 19, and 24 is contained herein. Applicant’s elected species was found free of the art and the search expanded to cover the full scope of formula I.
Priority
This application is a Continuation application of International Patent Application No. PCT/EP2021/051095, filed on January 20, 2021, which claims benefit of priority to International Patent Application No. PCT/CN2020/073830, filed on January 22, 2020.
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record.
Specification
The disclosure is objected to due to missing presumably hydrogen atoms in the chemical structures (e.g. see page 131):
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830
1016
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.
Note that in other parts of the specification these hydrogen atoms are incorporated into the chemical species. Correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 2, 5-16, and 24 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 14 and 16 of copending Application No. 18/404,194. Although the conflicting claims are not identical, they are not patentably distinct from each other because there is significant overlap between the two applications.
The genus structure of the instant application may fully encompass the claimed compounds of the copending application. For instance in the copending application, the claimed compounds (compositions readily formed as recited in claim 16) at claim 14 (see first compound for example) fall within the scope of formula I of the instant application wherein n = 1, p = 3, R2 = halo, R3 = methyl, R4 selected from halo and methoxy, ring A forms a piperidine ring substituted with ethyltriethyl amino which in turn is a pharmaceutically salt of the currently recited formula I. In other words the claimed subject matter may be anticipated by said species of the copending application.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
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, 5-16, and 24 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 pre-AIA the applicant regards as the invention.
In the instant claim 1 for variable R5 being selected from “halogen (fluoro)” renders the claim indefinite because it is unclear whether the limitations following the phrase halogen are part of the claimed invention. See MPEP § 2173.05(d). Thus the claim and claims dependent on it which do not rectify the issue are considered indefinite. Correction is required.
The language in claim 6 “according to anclaim 5” is unclear since it could imply referencing claim 5 itself or “any of claim 5” or something else. Correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 10, 13, 16, and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2, 10, 13, and 16 do not further limit claim 1 with respect to variables R4,5 being aminoalkyl-SO2, heteroaryloxy (broader in scope) since claim 1 recites specific sizes for these embodiments prior (e.g. 5- to 14-membered heteroaryloxy).
Claim 19 recites chemical species that are not further limiting in scope with respect to formula I such as the following at bottom of page 13:
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1252
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The following was generated with a chemical drawing program and has the limitation wherein R1 is alkyl substituted with -NHalkylcarbamoyl which does not appear to be supported by the language in claim 1. This species and any other species not falling within the scope of the claims should be addressed if necessary.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
The examiner also requests due to the sheer number in size of claimed species that Applicant conveniently points out the location of these species and their chemical formula in the specification since the listed species and their structures are not presented in any chronological order in the specification.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
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.
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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624