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 .
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.
Current Status of 18/030,865
This Office Action is responsive to the amended claims received 17 October 2023.
Claims 1-20 are currently pending.
Priority
Applicant’s claim for the benefit of the prior-filed patent applications PCT/US2021/071762 (filed 7 October 2021), 63/088,787 (filed 7 October 2020), and 63/123,337 (filed 9 December 2020) under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) is acknowledged.
For the purposes of the instant action, the Examiner has determined that the effective filing date of the instant claims is 7 October 2021. Sufficient support was not found in earlier-filed priority documents.
Information Disclosure Statement
The information disclosure statements (IDS) received on 3 August 2023 and 22 May 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, these information disclosure statements are being considered by the examiner.
Specification
The disclosure is objected to because it contains multiple embedded hyperlinks and/or other form of browser-executable code on pages 112 and 255. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code. References to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01(VII).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to, because it is so non-specific that it does not function as a useful abstract. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 6-8 are objected to because of the following informalities: Each of these claims ends with a semicolon instead of a period. Appropriate correction is required.
Claims 11 is objected to because of the following informalities: A conjunction is required between the final two compounds listed. Appropriate correction is required.
Claims 19 is objected to because of the following informalities: The “autoimmune disease” of claim 19 should be preceded by the word “the”. Appropriate correction is required.
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.
Claims 1-20 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.
Claims 1 and 3 each recite “two R groups on the same carbon or nitrogen are optionally taken together with their intervening atoms to form… [a] ring”. It is unclear what atoms are being referred to as “intervening atoms” when the two R groups are attached to the same atom. This renders claims 1-20 indefinite. Applicant may choose to explain why this phrase would be clear to the reader or may choose to delete the phrase “with their intervening atoms”.
Within the definition of X’, claim 1 recites “wherein 1-2 methylenes of X is optionally replaced”. It is not clear what the “X” therein is referring to, as it is not defined within the claim. This renders claims 1-2 and 5-20 indefinite. Applicant may choose to replace the quoted phrase above with “wherein 1-2 methylenes of X’ are optionally replaced”.
Claim 20 recites “large granular lymphocytic (LGL) leukemia (T and NK cell)”. It is unclear what the phrase “T and NK cell” within parentheses functions as within this claim. It is not clear if this phrase is a required limitation of the claim, or is merely exemplary language. This renders claim 20 indefinite. This quoted phrase should be deleted and Applicant may choose to incorporate the matter of the phrase into the claim in a clear manner.
Allowable Subject Matter
Claims 1-20 are herein rejected under 35 U.S.C. 112, but would be allowable if all 35 U.S.C. 112 rejections are overcome.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is that of WANG (Cited by Applicant in IDS of 3 August 2023; WO 2020/205467 A1; International Publication Date 8 October 2020), which teaches similar compounds. Specifically, WANG teaches the first compound below as compound 36 on page 38 therein, and WANG teaches the second compound below as compound 82 or page 46 therein.
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Compound 36 of WANG is similar to the compounds of instant claim 1, but differs at least due to the identity of the A ring required by instant claim 1 and the identity of the bicyclic ring within instant claim 1 that contains the X’ variable. Compound 82 of WANG is similar to the compounds of instant claim 3, but differs due to the identity of A ring required by instant claim 1.
Conclusion
No claims are currently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D MCANANY whose telephone number is (571)270-0850. The examiner can normally be reached 8:30 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANDREW D KOSAR can be reached at (571)272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JDMc/Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625