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, 33-36, 41-44, 46-49, 62-66, 68-77, 79, 83 and 117-119 are pending in the instant application. Claims 37-40, 45, 67 and 116 are cancelled, claimed 1, 20, 46-49, 70, 76 and 79 are amended and claims 117-119 are new via the amendment filed March 25th, 2026.
Priority
This is a 35 U.S.C. 371 National Stage filing of Application No. PCT/US2021/031381 filed May 7th, 2021, which claims priority to 63/120,984, filed December 3rd, 2020 and 63/022,111, filed May 8th, 2020.
Information Disclosure Statement
The Information Disclosure Statements (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Withdrawn Objections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 The objection of claim 76 has been withdrawn.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 The objection of claim 79 has been withdrawn.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.
Withdrawn Rejections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 The 112(b) rejection of claim 83 has been withdrawn.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 1-3, 15-17, 19-24, 29-30, 41-44, 46-47, 62, 64 and 68-75 have been fully considered and are persuasive. The 35 U.S.C. 102 rejection of claims 1-3, 15-17, 19-24, 29-30, 41-44, 46-47, 62, 64 and 68-75 has been withdrawn.
Applicant has overcome this rejection by amending claim 1 to delete options for group -E-G- and V. 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 1-3, 15-17, 19-24, 29, 41-44, 46-47, 62, 64 and 68-75 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. 42-43 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 64” in the reply filed on September 9th, 2025 is acknowledged.
Applicant states claims 1-3, 15-24, 29-30, 41-44, 46-47, 62, 64, 68-77, 79 and 83 read on the elected species; however, claim 18 is not embraced by the elected species, as in the elected species, as Q is not O. Further, claims 118-119 are drawn to structural species other than elected compound 64 and are also withdrawn.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species of compound 64 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 30, 76-77, 79 and 83, as well as structural species:
PNG
media_image1.png
162
356
media_image1.png
Greyscale
.
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, 15-17, 19-24, 29-30, 41-44, 46-47, 62, 64, 68-77, 79, 83 and 117. Claims 1-3, 15-17, 19-24, 29-30, 41-44, 46-47, 62, 64, 68-77, 79, 83 and 117 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 4-14,18,25-28,31,33-36, 38-39,48-49,63, 65-66 and 118-119 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 September 9, 2025.
Claim Rejections – Improper Markush Grouping
Claims 1-3, 15-17, 19-24, 29, 41-44, 46-47, 62, 64 and 68-75 are 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
PNG
media_image2.png
168
270
media_image2.png
Greyscale
, 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 unsubsituted 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.
PNG
media_image2.png
168
270
media_image2.png
Greyscale
PNG
media_image3.png
93
399
media_image3.png
Greyscale
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.
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.
Claim(s) 1, 15-16, 19-24, 29, 41-42, 46-47, 62 and 68-72 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 515878-77-0, which entered STN on May 15th, 2003.
PNG
media_image1.png
162
356
media_image1.png
Greyscale
Regarding claim 1, This compound is embraced by Formula Ia, wherein A is
PNG
media_image4.png
82
58
media_image4.png
Greyscale
, X2-X4 and X8-X9 are CR1, wherein R1 are H, Q is O, Y1-Y4 are CR2, wherein R2 is H, -E-G- is –(C=O)NRx-, wherein Rx and Y3 are taken together to form a 5-memebred heterocycle, Z1-Z4 are CR3, wherein R3 is H and -ORa, wherein Ra is alkyl, V is O and R4 is C1 alkyl.
Regarding claim 2, Q is O.
Regarding claim 15,
PNG
media_image5.png
124
149
media_image5.png
Greyscale
.
Regarding claim 16,
PNG
media_image6.png
146
80
media_image6.png
Greyscale
is
PNG
media_image7.png
101
62
media_image7.png
Greyscale
.
Regarding claims 19-24, R1 is H.
Regarding claim 29,
PNG
media_image6.png
146
80
media_image6.png
Greyscale
is
PNG
media_image7.png
101
62
media_image7.png
Greyscale
.
Regarding claims 41-42,
PNG
media_image8.png
95
97
media_image8.png
Greyscale
is
PNG
media_image9.png
138
131
media_image9.png
Greyscale
.
Regarding claims 46-47,
PNG
media_image10.png
119
521
media_image10.png
Greyscale
.
Regarding claim 62, R2 is H.
Regarding claim 68,
PNG
media_image11.png
36
162
media_image11.png
Greyscale
.
Regarding claim 69, R5 is H.
Regarding claim 70,
PNG
media_image12.png
50
72
media_image12.png
Greyscale
is
PNG
media_image13.png
60
97
media_image13.png
Greyscale
.
Regarding claim 71, R5 is H.
Regarding claim 72, Ra is alkyl.
Allowable Subject Matter
Claims 30, 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anna Grace Kuckla whose telephone number is (703)756-5610. The examiner can normally be reached Monday-Friday 7:30-5.
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, Clinton A Brooks can be reached at (571)270-7682. 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.
/A.G.K./Examiner, Art Unit 1626
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
Prosecution Insights