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
Status of Claims
Claims 78-104 are pending in the instant application. Claims 94-104 are new claims and drawn to the elected group but are not drawn to the elected species. Thus claims 80 and 85-104 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 78, 79, and 81-84 is contained herein.
Priority
Applicant’s amendments and arguments, see Remarks, filed 12/7/2025, with respect to the Non-Final Office Action mailed 11/3/2025, have been fully considered. Thus, the instant application receives priority to the provisional application.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 11/3/2025 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 12/7/2025.
Status of Specification
The objection to the abstract is maintained.
Applicant’s arguments, see Remarks, filed 12/7/2025, with respect to the objection set forth in the Non-Final Office Action mailed 11/3/2025, have been fully considered but are not found persuasive.
To reiterate the objection, Applicant is reminded of the proper content of an Abstract of the Disclosure, see MPEP 608.01(b).
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., "The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics." Exemplification of a species could be illustrative of members of the class. For processes, the type reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
It is recommended that the structure of Formula III or another chemical formula representative of the invention be inserted into the abstract to accurately illustrate the claimed invention.
Applicants argue that the incorporation of chemical formulas into the abstract at this stage may introduce complexities with the published version. The examiner is not persuaded by this argument and that incorporation of a structural formula would not create such inconsistencies and complexities as there are a myriad of issued patents possessing such structural formulas. Additionally, the abstract of the disclosure must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). Thus the objection will remain. Correction is required.
Status of Rejections
35 USC § 112 (b)
The rejection of claims 78, 79, 81, and 83 is maintained.
Applicant’s arguments and amendments, see Remarks, filed 12/7/2025, with respect to the objection set forth in the Non-Final Office Action mailed 11/3/2025, have been fully considered but are not found persuasive.
To reiterate the pertinent rejections, claim 78 recites that variables X4-12 may be selected from “C”. The latter results in trivalent carbon species if variables n and m are 0. What are the remaining groups to select from to complete the carbon valence if n and m are absent? Applicants have amended the claims to specify that “C” is now “Carbon” which does not address the issue of dangling valencies. There is no difference between the aforementioned language. Thus the rejection is maintained.
Claim 78 recites indefinite language such as reverse amide analogs wherein the meets and bounds of these species are not clearly articulated in the claims itself or specification. Applicants argue that the language is clear to those skilled in the art and basically a reversal of the amine-carbonyl arrangement of an amide group. The examiner does not argue this logic. However as stated in the Non final office action, the majority of the chemical species recited in this claim do not embrace any amide groups. Thus, what reverse amide analogs are Applicants referring to if there are no amide groups present in these species as shown?
In reference to the generic formula shown that may embrace an amide moiety, are Applicants suggesting that these compounds are limited in nature to having amide groups to satisfy accessing these reverse analogs or something else? Thus the scope is indefinite and the rejection is maintained.
35 USC § 112 (d)
The rejection of claim 79 is maintained.
Applicant’s arguments and amendments, see Remarks, filed 12/7/2025, with respect to the objection set forth in the Non-Final Office Action mailed 11/3/2025, have been fully considered but are not found persuasive.
To reiterate the rejection of record, claim 79 does not further limit claim 78 with respect to variable R3 being selected from
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since claim 78 did not set forth these possibilities. The most recent amendment to claim 79 still recites
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as an embodiment. Thus the rejection is maintained. Correction is required.
New Rejections
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.
Claim 84 is 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.
Claim 78 which claim 84 is dependent on recites that variables X4-12 may be selected from “Carbon”. The latter results in trivalent carbon species if variables n and m are 0. What are the remaining groups to select from to complete the carbon valence if n and m are absent?
Claim 78 recites indefinite language such as reverse amide analogs wherein the meets and bounds of these species are not clearly articulated in the claims itself or specification. For example the majority of the chemical species recited in this claim do not embrace any amide groups. Thus, what reverse amide analogs are Applicants referring to if there are no amide groups present in these species as shown?
In reference to the generic formula shown that may embrace an amide moiety, are Applicants suggesting that these compounds are limited in nature to having amide groups to satisfy accessing these reverse analogs or something else?
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.
Claim 82 is 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. Claim 82 does not limit claim 78 with respect to the following species:
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274
766
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wherein variable X10 is not N.
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 78, 79, and 83 are rejected under 35 U.S.C. 102(a)(1) as being anticipated over compound with registry number
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346
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in CAS STNext.
CAS STNext teach the following compound in registry:
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356
774
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wherein the compounds have the limitation: variables X8-12 forms a pyridine ring, X2,3 along with remaining variable and ring form a fluoro substituted benzoxazole, and L1 methylene. Thus the claims are anticipated. In regard to language in claim 83, note that the limitations do not make the claims patentable when the prior art teaches all of the claimed structural limitations, see In re Schreiber, 128F.3d 1473, 1477 (Fed. Cir. 1997) and Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003), “a statement of intended use cannot distinguish over a prior art apparatus that discloses all the recited limitations and is capable of performing the recited function,” see In re Schreiber, 128F.3d 1473, 1477 (Fed. Cir. 1997) and Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003)
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 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
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