DETAILED ACTION
Claims 1, 3-10, 15-16, 19-21, 27-28, 30-31 and 34 are currently pending in the instant application.
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, drawn to claims 1, 3-10, 15-16 and 27-28 with election of species
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in the reply filed on 12/18/2025 is acknowledged.
The elected species and compounds appear allowable over the prior art of record. However, there are 112 issues as more fully described below. A phone call was made on 01/06/2025 to Mark Jenkins to address the issues but no contact was made.
Claims 19-21, 30-31 and 34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/18/2025.
Priority
The application claims priority to US Provisional Appl. No.
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, filed
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.
Information Disclosure Statement
Applicant's Information Disclosure Statement filed on 11/21/2023 and 01/15/2025 have been considered. Please refer to Applicant's copies of the 1449 submitted herewith.
Claim Objections
Claims 10 and 15-16 are objected to because of the following informalities: Claim 10 has compounds including Example 34-40 that appear cut off/incomplete. Appropriate correction is required. Since claims 15-16 depend on claim 10 and do not fix the issue, they have also been objected to.
Claims 1, 3-8 and 27-28 are objected to for the following informalities: Claims 1, 3 and 6-8 state “X2 comprises a bond between X1 and X3”. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (“like the term ‘comprising,’ the terms ‘containing’ and ‘mixture’ are open-ended.”). Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003) (“The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps.”); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997). The definition for X2 implies that there can be numerous other substituents between X1 and X3 in addition to a bond. However, it appears applicants intended to for the claim to include bond directly between X1 and X3. As such, Examiner recommends amending the claim to recite “is” or “consists of” in place of “comprises”. Since claims 4-5, 9, and 27-28 do not resolve the issue, so they are included in the objection.
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, 3-9, and 27-28 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 6 recite the limitation "or a derivative thereof" under the definition of A. The specification fails to limit and clearly delineate what can be considered a "derivative." According to Hackh's chemical dictionary, "derivative" is defined as a compound, usually organic obtained from another compound by a simple chemical process or an organic compound containing a structural radical similar to that from which it is derived (Hackh's chemical dictionary, 1972). Multiple derivatives of
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having various functional groups and chemical reactivity are encompassed by the instant claims. The compounds “or a derivative thereof” are not defined by a structural formula so as to know the metes and bounds of the claims. Such language fails to clearly define the subject matter being claimed, as a skilled artisan would not be apprised of how which structural modifications are considered to be similar enough to the base molecule to meet the term “derivative”. Thus, the term "or a derivative thereof" found in the definition for A in claim 1 and 6 are not defined in the claims so as to know the metes and bounds of the claims. As claims 3-5, 7-9, 19-21, 27-28, 30-31 and 34 do not fix the issue, they have been rejected as well. It is suggested that the definition for A be replaced with “A is a moiety selected form any one of A1-A7” phrase thereby eliminating the phrase “or a derivative thereof” in order to overcome this rejection.
Regarding claims 1 and 6, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 1 and 6 recite “such as” under the variable A -
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, R11 states
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as well as under R11a. Since claims 3-5, 7-9 and 27-28 do not resolve the indefiniteness, they are included in the rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Prior art such as US 2014/0170110 teaches compounds as JAK inhibitors but do not teach the instant definition for A as
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. Further prior art such as WO 2021/003501 does not teach a cyano group in a ring position ortho to the NH-pyrimidine substituent as taught by the instant claims.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAREN CHENG whose telephone number is (703)756-4699. The examiner can normally be reached M-F, 9AM-6PM PST.
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, Adam Milligan can be reached at 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KAREN CHENG/Primary Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623