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 .
Status of Claims
Claims 1-31, 33-49, 62-77, 79, 83 and 116-120 are pending in the instant application. Claims 37-40 and 45 have been cancelled, claims 117-120 have been added and claims 1, 20, 68, 70, 74, 79 and 83 have been amended via amendment filed March 25th, 2026.
Priority
This is a 35 U.S.C. 371 National Stage filing of Application No. PCT/US2021/031297 filed May 7th, 2021, which claims priority to 63121000, filed December 3rd, 2020 and 63021981, filed May 8th, 2020.
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed 11/05/2025, 03/25/2026 and 05/01/2026 have been considered by the Examiner.
Withdrawn Objections
Applicant’s arguments and amendments, filed March 25th, 2026, with respect to objection of claim 76 have been fully considered and are persuasive. The objection of claim 76 has been withdrawn.
Applicant has overcome this objection by amending thew claim to recite “The compound of claim 1, wherein the compound of Formula Ia has a structure selected from the group consisting of..” and insert “and” before the last structure of the claim.
Applicant’s arguments and amendments, filed March 25th, 2026, with respect to objection of claim 79 have been fully considered and are persuasive. The objection of claim 79 has been withdrawn.
Applicant has overcome this rejection by amending the claim to recite “The compound of claim 1, wherein the compound of Formula Ia is selected from the group consisting of..” and insert “and” before the last structure of the claim.
Applicant’s arguments and amendments, filed March 25th, 2026, with respect to objection of claims 14, 75 and 77 have been fully considered and are persuasive. The objection of claims 14, 75 and 77 has been withdrawn.
Applicant has overcome this objection as the 102 rejection of claim 1 has been overcome. However, as Applicant’s amendment has necessitated a new 102 rejection, the claims are also newly objected to as being dependent on a rejected base claim. See allowable subject matter section.
Withdrawn Rejections
Applicant’s arguments and amendments, filed March 25th, 2026, with respect to the 35 U.S.C. 112(b) rejections of claim 83 have been fully considered and are persuasive. The 112(b) rejection of claim 83 has been withdrawn.
Applicant has overcome this rejection by amending the claim to replace the references to the specification with specific compound structures.
Applicant’s arguments and amendments, filed March 25th, 2026, with respect to the 35 U.S.C. 102 rejections of claims 1-2, 9-13, 19-21, 23-24, 27, 33-36, 41-44, 48-49, 62, 64, 68-69 and 70-74 have been fully considered and are persuasive. The 35 U.S.C. 102 rejection of claims 1-2, 9-13, 19-21, 23-24, 27, 33-36, 41-44, 48-49, 62, 64, 68-69 and 70-74 has been withdrawn.
Applicant has overcome this rejection by amending claim 1 to delete options for group -E-G- and R4. However, Applicant’s amendments have necessitated a new grounds rejection.
Maintained Rejections
Applicant's arguments filed March 26th, 2025 with respect to the Improper Markush rejection of claims 1-2, 9-13, 19-26, 33-36, 41-44, 48-49, 62, 64 and 68-74 have been fully considered but they are not persuasive.
See response to remarks.
Response to Remarks
Applicant’s arguments, with regard to the claim objections, 112(b) rejection and 102 rejections are moot as Applicant’s arguments and amendments have overcome the objections and rejections. However, Applicant’s amendments have necessitated a new grounds 35 U.S.C. 102 rejection as seen below.
Applicant’s arguments and amendments filed in regards to the improper Markush rejection are unpersuasive.
On p. 41 of the remarks, Applicant argues that the amendment to claim 1, requiring that “-E-G- is –(CO=)NRx- or -NRX(C=O)-, wherein Rx and Y3, Rx and Y4, Rx and Z1, or Rx and Z4 taken together from an optionally substituted 5-6-membered heterocycle” is sufficient to recite a proper Markush grouping.
In response, as the heterocyclic entity of -E-G- and connectivity of -E-G- is not defined, there is not a single structural similarity present in claim 1. As such, the improper Markush rejection is maintained.
Response to Restriction/Election
Applicant’s election without traverse of “Compound 67” in the reply filed on August 28th, 2025 is acknowledged.
Applicant states claims 1-3, 9-14, 19-21, 23-24, 26-27, 33-36, 41-44, 48-49, 62, 64, 68-77, 79 and 83 read on the elected species; however, claim 3 is not embraced by the elected species, as in the elected species, X7 is CR1, wherein R1 is F and claim 3 requires that X7 be CH. Further, claim 26 does not read on the elected species, as claim 26 is dependent on claim 25. Further, claims 118 and 119 are drawn to a non-elected species compound.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species of compound 67 appears allowable. Therefore, according to MPEP 803.02: should the elected species be found allowable, the examination of the Markush-type claim will be extended. If the examination is extended and a non-elected species found not allowable, the Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration. The examination of the Markush-type claims has been extended to include the scope of claims 75-77 and 79, as well as structural species:
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Since a non-elected species has been found not allowable, examination has been limited to claims directed to the elected species, which are presently claims 1-3, 9-14, 19-21, 23-24, 27, 33-36, 41-44, 48-49, 62, 64, 68-77, 79 and 83. Claims 1-3, 9-14, 19-21, 23-24, 27, 33-36, 41-44, 48-49, 62, 64, 68-77, 79 and 83 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since the nonelected species has been found not allowable, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Claims 3-8, 15-18, 22, 25-26, 28-31, 46-47, 63, 65, 67 and 116 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention or species. Election was made without traverse in reply filed August 28th, 2025.
Maintained Claim Rejections – Improper Markush Grouping
Claims 1-2, 9-13, 19-26, 33-36, 41-44, 48-49, 62, 64, 68-74 and 120 stand rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984).
A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of the formula Ia
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, is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
First, the alternatives are not members of the same class of compounds, even though they have a common use. The members must be members of the same class and have a common use. In fact, the compounds belong to numerous classes of compounds, such as pyridines, quinolines, benzene, etc. (see, e.g., ring A.) and indoline (e.g., when Rx and Z4 are taken together to form an unsubstituted 5-memebered heterocycle ring), etc.
Second, the members of the Markush grouping do not share both a substantial structural feature and a common use that flows from the substantial structural feature. In other words, there is no common core structure that is responsible for the common use. In this case, the compounds share all atoms that (a) are not connected in a manner that forms an art-recognizable structure and (b) do not give rise to a common use.
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To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
New Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 20-21, 23, 27, 33-36, 41-44, 48-49, 62, 68, 70, 74-75 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated Selvakumar et al (Materials Science and Engineering B 168 (2010) 214–218).
Selvakumar teaches the following compound (Scheme 1):
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.
Regarding claim 1, this compound is embraced by formula Ia, A is
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, X2-X4 are CR1, wherein R1 is H and -CN, Q is O, Y1-Y4 are CR2, wherein R2 is H, -E-G- is –NRx(C=O)-, wherein Rx and Za are taken together to form a heterocycle, Z1-Z4 are CR3, wherein R3 is H, V is O and R4 is aryl, substituted with R5, wherein R5 is -ORa, wherein Ra is heteroaryl.
Regarding claim 2, Q is O.
Regarding claims 20-21, 23, R1 is H and -CN.
Regarding claim 27, the claim recites “wherein the structural moiety
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has the structure of…”, however, as the compound above has the structural moiety
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, the compound reads on the claim.
Regarding claim 33-36,
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Regarding claims 41-44,
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is
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Regarding claims 48-49,
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is
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Regarding claim 62, R2 is H.
Regarding claims 68, 70 and 74-75, R4 is
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Regarding claim 120, R4 is aryl.
Allowable Subject Matter
Claims 76-77, 79, 83 and 117 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form.
Conclusion
No claim is 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.
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/A.G.K./Examiner, Art Unit 1626
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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