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 .
Priority
The instant application is a 371 National Stage Entry of PCT/EP2021/071332 filed on July 29, 2021 which claims priority to foreign application No. EP20382684.7 filed on July 29, 2020.
Status of Claims
Acknowledgement is made of previously presented (3-9, 10, 13, 20, 23, 21-22, 41-44, 46), amended (1, 48), cancelled (2, 11-12, 14-19, 24-40, 45, 47) claims filed February 18, 2026. Claims 1, 3-9, 10, 13, 20-23, 41-44, 46, 48 are pending. Claims 10, 21-22, 41-42, 46 are withdrawn. Claims 1, 3-9, 13, 20, 23, 43-44, 48 are presently examined.
Claim Interpretation
Claim 44 is understood to read as intended use and the structural limitations of the claim are met by a compound of Formula Ia.
Election/Restrictions
Claims 41-42, 46 stand withdrawn as being drawn to a non-elected invention; claims 10, 21-22 stand withdrawn as being drawn to a non-elected species.
The elected species is understood as follows:
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Following extensive search and examination, the originally elected species has been deemed free of the prior art. Per MPEP § 803.02(III):
If the examiner determines that the elected species is allowable over the prior art, the examination of the Markush claim will be extended. If prior art is then found that anticipates or renders obvious the Markush claim with respect to a nonelected species, the Markush claim shall be rejected; claims to the nonelected species would still be held withdrawn from further consideration. The prior art search will not be extended unnecessarily to cover all nonelected species.
Accordingly, Examination was extended to a non-elected species. Following extensive search and examination, the non-elected species was deemed anticipated and/or obvious in view of the prior art as applied below. Per MPEP § 803.02(III), claims directed to other nonelected species have been withdrawn.
Claims 1, 3-9, 13, 20, 23, 43-44, 48 are presently examined.
Response to Arguments
Acknowledgement is made of amendments filed February 18, 2026. Applicant’s amendments have overcome the following:
the 35 U.S.C. 101 rejection of claim 48,
the 35 U.S.C. 112(b) rejection of claim 48, and
the 35 U.S.C. 102(a)(1) rejection of claim(s) 1, 5-9, 22, 44, 48 are rejected under over STN1 and evidenced by Carbone et. al.2
The above have been withdrawn.
Applicant’s arguments filed February 18, 2026 have been fully considered and are not persuasive.
The Examiner appreciates Applicant’s explanations addressing the uncertainty of claim wording. However, as the claims stand, that uncertainty is still present. The Examiner suggests amending claim 1 as follows (wording taken from Applicant’s explanations, see highlighted underlined limitations) in order to resolve the issues of indefiniteness and scope:
Claim 1. A compound
…
G is independently selected from a moiety of formula (II) or (III),
…
wherein F is linked to G through any of the R1, R1’, R2, R2’, R3, R3’, R4, R5, or E positions,
wherein each occurrence of,
R1, R1’
…
L, when present,
…
and wherein,
c + e is at least 1
L is present when d is not 0 and R8 is formula V,
when c + e is 0 and d is 1, then Z
…
Maintained/Modified Rejections
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, 3-9, 13, 20, 23, 43-44, 48 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.
Claim 1 is rejected as failing to distinctly claim the subject matter because the G moiety is defined as
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, which clearly shows connection to the S’ moiety of Formula Ia
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, but the E fragment is defined as “independently selected from R6 or F”. Is the F moiety of Formula Ia even required if E can be R6? If E is R6 and F is present how does F connect? If E is F does that mean there are two F’s present and if so how do they connect?
Formula Ia also shows S’ potentially connected to L. However S’ is defined as
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which has only two points of attachment. It is unclear where L would connect if present because S’ is understood to connect to G and NC.
Claim 1 states R1-R4 may be F. It is unclear if, for example, when R1 is F, if it is the same F depicted in Formula Ia or an additional F, and if an additional F, where does the F of Formula Ia connect?
Dependent claims 3-9, 13, 20, 23, 43-44, 48 do not resolve these issues of indefiniteness and are thus incorporated in instant rejection.
Claim 23 defines further instances of G such as G1
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which indicates connectivity to S’. However it is unclear if the F present in the subgenus G such as G1 is in addition to the F in Formula Ia, and if so how does the Formula Ia F connect? Or is G1 defining where the F in Formula Ia is connecting?
Claim Rejections - 35 USC § 112(d)
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 pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 5-9 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 5-9 state the phrase “at least one F moiety” (claims 5-9) and “at least one biologically active moiety” (claims 7-8), but claim 1 does not appear to clearly indicate more than one F in Formula Ia (see above 112b Rejection).
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.
Allowable Subject Matter
Once the 35 U.S.C. 112 issues are resolved, the presently examined claims would appear to be free of the prior art. The closest prior art appears to be Vishwanatha et. al.3 or STN4.
Vishwanatha teaches isonitrile structures such as CAS Registry No. 1095038-52-0 (see Vishwanatha at pp. 1097-1098 Table 1 “Isonitrile 2” column).
CAS# 1095038-52-0
Instant Formula Ia
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The compounds of Vishwanatha partially correspond with Formula Ia; they contain an isonitirle end group (instant NC), a linear spacer (such as instant S’), a linear amide moiety (such as instant G formula II), and a biologically active moiety Fmoc or phenyl (such as instant F).
Likewise, STN teaches CAS Registry No. 1056895-42-1, which partially corresponds with instant Formula Ia; it contains an isonitirle end group (instant NC), a linear spacer (such as instant S’), a linear amide moiety (such as instant G formula II), and a biologically active moiety indole or substituted phenyls (such as instant F).
CAS# 1056895-42-1
Formula Ia
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The prior art differs from the instant claims as follows: While Vishwanatha and STN’s structures partially correspond to instant Formula Ia, they notably differ at instant S’.
Instant S’ requires the presence of an ether, PEG-like moiety or the presence of the Z-R8 moiety. The teachings of Vishwanatha and STN include short or long alkyl “spacers”, but no ether linkages or Z-R8 moieties.
No suggestion or motivation was found in the prior art to modify the compounds of Vishwanatha or STN to contain an S’ moiety to arrive at a compound of instant Formula Ia.
Conclusion
Claims 1, 3-9, 13, 20, 23, 43-44, 48 are rejected.
THIS ACTION IS MADE FINAL. 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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/S.R./Examiner, Art Unit 1627
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613
1 CAS# 1056895-42-1 CAS Registry File Accessed November 10, 2025 from STN, entered into STN October 3, 2008. Cited in previous Office Action.
2 Carbone et. al. "Structure-based discovery of human l-xylulose reductase inhibitors from database screening and molecular docking" Bioorganic & Medicinal Chemistry 2005, 13, 2, 301-312. DOI: 10.1016/j.bmc.2004.10.030 Cited in previous Office Action.
3 Vishwanatha et. al. "Cyanogen Bromide as Dehydrosulfurizing Agent for the Synthesis of Nb-Fmoc
Amino Alkyl Isonitriles from Nb-Fmoc-Amino Alkyl Thioformamides" Synlett, 2010, 7, 1096-1100. DOI: 10.1055/s-0029-1219583. Hereinafter Vishwanatha.
4 CAS 1056895-42-1. CAS Registry File Accessed April 3, 2026 from STN, entered into STN October 3, 2008. Hereinafter STN.