DETAILED ACTION
Claims 1-3 and 7-19 are currently pending in the instant application. Claims 1 and 7-12 are rejected. Claim 1 is objected. Claims 2, 3, and 13-19 are withdrawn from consideration as being for non-elected subject matter.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 22 October 2025 has been acknowledged along with the election of species on 4 November 2025 of the species found on page 13, top row, center structure:
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.
According to MPEP 803.02, the examiner has determined whether the elected species is allowable. Applicants’ elected species appears allowable. Therefore, the search and examination has been extended to the compounds listed in claim 1 of:
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which also appear allowable over the prior art. The last listed structure of claim 1 was not examined as it was unclear what atom is in the ring as discussed below.
Claims 1 and 7-12 have been examined to the extent that they are readable on the elected embodiment, the elected species and the above mentioned compounds.
Response to Amendment and Arguments
Applicant's amendment and arguments filed 5 March 2026 have been fully considered and entered into the instant application. Applicant’s amendment has overcome the 35 USC 112 rejection of claims 1 and 7-12 in regards to variable R’ and has overcome the 35 USC 102(a)(1) rejection as being anticipated by US Patent No. 6,831,081. However, applicant’s amendment filed 5 March 2026 has introduced the following objection to claim 1 and the following 35 USC 112(b) rejection of claims 1 and 7-12.
Claim Objections
Claim 1 is objected to because of the following informalities: the added formula to claim 1 are unclear, see for example, the last compound:
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where it is unclear what atom is present in the ring. Additionally, the wedge and dashed lines are unclear on some of the structures. 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.
Claim 1 and its dependent claims 7-12 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. Specifically claim 1 is claiming a compound according to Formula (I):
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or an optically pure stereoisomer, pharmaceutically acceptable salt, solvate, or prodrug thereof, wherein the compound is selected from the group consisting of 24 specific species. Claim 1 and its dependent claims are considered indefinite as it is unclear how the 24 species listed after the Formula (I) are within the Formula (I). The last listed compound is unclear, therefore, the examiner is unable to determine if the last listed structure is within Formula (I). Additionally, as none of the variables are defined for formula (I), the examiner is unable to determine if any of the 24 species listed are within Formula (I) as the examiner is unable to compare the species to the definitions of the variables. Lastly, the compound of Formula (I) has a N atom in the 6 membered aromatic ring attached to the -C(OH)- group in the formula (I), however, 19 of the structures listed within Formula (I) in claim 1, do not have a N atom in the 6 membered aromatic ring. See for example,
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compared to, for example,
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wherein the 6 membered aromatic ring within the box does not contain a N atom. It is unclear how the 24 species listed in claim 1 are within the Formula (I) in claim 1 rendering claim 1 indefinite along with its dependent claims 7-12. If applicant is intending to claim the 24 listed species, it is suggested that claim 1 be amended to “A compound selected from the group consisting of…” and then list the 24 species in legible structures with an and between the last two listed structures and followed by “or an optically pure stereoisomer, pharmaceutically acceptable salt, solvate, or prodrug thereof.”
Conclusion
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 REBECCA L ANDERSON whose telephone number is (571)272-0696. The examiner can normally be reached Monday-Friday from 6am-2pm.
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, Andrew 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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/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626 ____________________ 29 May 2026
Rebecca Anderson
Primary Examiner
Art Unit 1626, Group 1620
Technology Center 1600
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