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 .
DETAIL ACTION
This office action is a response to a 371 application filed 12/12/2022, which is a national stage application of PCT/US21/37405 filed 6/15/2021, which claims domestic priority to 63/039,704 filed 6/16/2020.
As filed, claims 1-15 are pending.
Election/Restrictions
Applicant’s election without traverse of Group I – Claims 1-5 and 10-15 in the reply filed on 11/14/2025 is acknowledged.
Claims 6-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/14/2025.
Regarding the election of species requirement, Applicant elected the species of
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, which is found on pg. 186 of the instant specification. The claims, which read on the elected species, are instant claims 1-5 and 10, according to Applicant’s reply filed 11/14/2025.
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Examination will begin with the elected species. In accordance with the MPEP 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species . Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
As per MPEP 803.02, the Examiner will attempt to determine whether the entire scope of the claims is patentable. Applicants' elected species, as shown above, does makes a contribution over the prior art of record. Therefore, according to MPEP 803.02: should the elected species appear allowable, the search of the Markush-type claim will be extended. The search and examination should be continued until either (1) prior art is found that anticipates or renders obvious a species that falls within the scope of a proper Markush grouping that includes the elected species, or (2) it is determined that no prior art rejection of any species that falls within the scope of a proper Markush grouping that includes the elected species can be made. The Examiner need not extend the search beyond a proper Markush grouping.
While searching for prior art on the elected species, prior art was found that anticipated other species encompassed by the claims. Both prior art rejections were made below in order to advance compact prosecution.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/12/2022; 10/9/2024; and 11/14/2025 has been considered by the Examiner.
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, 3, and 5 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.
Regarding claim 1, the claim failed to recite the definition for instant variables R10 and R11 for (iii), (iv), (v) and (vi), when the definition for instant variables R10 and R11 was recited for (i) and (ii). Accordingly, the metes and bounds of R10 and R11 are unclear for the structures recited in (iii), (iv), (v) and (vi). The claims are rendered indefinite.
Regarding claims 3 and 5, these claims are dependent of claim 1, and they failed to correct the indefiniteness issue of claim 1, which rendered these claims indefinite.
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 1-5 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chemical Abstract Registry No. 1015369-39-7, hereinafter CAS397.
Regarding claims 1-5 and 10, CAS397 teaches the following compound or pharmaceutical composition thereof (with unbuffered water), which meets all the limitation of these claims.
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Wherein in claims 1 and 10: instant variable Ar1 is
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; one of instant variables R1 and R2 is methyl, while the other is H; instant variable R3 is H; instant variable L is -CONH-; instant variable Ar2 is phenyl substituted by -SO2-R10; and instant variable R10 is unsubstituted phenyl-NH-.
Where in claim 2: instant Ring A is
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; instant variable R4 is methyl; instant variables R5 and R6 taken together form =O; instant variable Q2 is S; instant variable Q1 is NH; instant variable L is -CONH-; instant variable R3 is H; instant variable R1 is H; and instant variable R2 is unsubstituted phenyl.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem substance No. SID398191177, hereinafter SID177. See IDS filed 12/12/2022.
Regarding claims 1 and 3, SID177 teaches the following compound, which meets all the limitations of these claims.
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Wherein: instant variable Ar1 is
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; instant variable Y5 is N; instant variableS Y6-Y8 are C; instant variable L is -CONH-; instant variable Ar2 is phenyl substituted by -SO2-R10; and instant variable R10 is unsubstituted phenyl-NH-.
Claim Objections
Claims 1, 3-5, and 10 are objected to because of the following informalities:
Regarding claim 1, the claim recites two instances of “arylamino” for instant variable R10 and thus, the duplicate needs to be removed.
Regarding claim 1, the claim recites
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, which appears to contain drawing error and can be corrected by reciting --
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--.
Regarding claim 1, the claim recites the following phrase, which is not in proper form because it failed to recite for alternative.
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Regarding claim 4, the claim, for instance, recites the following structure:
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, wherein the bonds on the -S(O)2- looks like two dots and thus, need to be corrected for this structure, as well as all other structures that have the same issue.
Regarding claims 3 and 10, the claims recite the phase, “A compound according to claim 1”.
The expression can be clarified by reciting -- The compound according to claim 1 --.
Regarding claim 5, the claim recites the phrase, “a compound according to claim 1”.
Such expression can be clarified by reciting -- the compound according to claim 1 --.
Appropriate correction is required.
Conclusion
Claims 1-5 and 10 are rejected.
Claims 1, 3-5, and 10 are objected.
Claims 6-9 and 11-15 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton 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.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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