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 . Claims 1-10 are currently pending.
Claim 1 is independent.
Priority
The instant application claims priority as follows:
PNG
media_image1.png
34
474
media_image1.png
Greyscale
PNG
media_image2.png
54
404
media_image2.png
Greyscale
Response to Election/Restriction
Applicant's election, without traverse, of Group I, claims 1-4, drawn to a compound of
PNG
media_image3.png
198
214
media_image3.png
Greyscale
and elected species
PNG
media_image4.png
150
210
media_image4.png
Greyscale
found in claim 2, in the reply filed on November 24, 2025 is acknowledged. Claims 1-4 read on the elected species.
Claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 24, 2025.
Examination
Examination will begin with the elected species. In accordance with 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 be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during further examination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final.
The elected species was searched and no applicable prior art was identified. The Examiner expanded the search and examination to the compounds of formula (I)
PNG
media_image3.png
198
214
media_image3.png
Greyscale
wherein W1, W2 and W3 are each CH, X is NH, R is cyclohexyl substituted by -NHalkyl or CH2-OH, Y is
PNG
media_image5.png
52
56
media_image5.png
Greyscale
and G is the group
PNG
media_image6.png
150
105
media_image6.png
Greyscale
. The expanded search encompasses the elected species and reads in part on claims 1-4.
The need to limit examination is warranted based on the extensive permutations permitted on all the available variables, which require separate electronic searches and which structures are classified in different classes.
Subject matter outside of the examined scope and claims 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions there being no allowable generic or linking claim.
Specification Objection - Abstract
Applicant is reminded of the proper content of an abstract of the disclosure.
With regard particularly to chemical patents, for compounds or compositions, the general nature of the compound or composition should be given as well as the use thereof, e.g., The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics. Exemplification of a species could be illustrative of members of the class. For processes, the reactions, reagents and process conditions should be stated, generally illustrated by a single example, unless variations are necessary. See MPEP § 608.01(b), Section B.
The abstract of the disclosure is objected to because it fails to exemplify any members or formulae illustrative of its class. Correction is required. See MPEP § 608.01(b). The examiner requests Applicant to illustrate compound species representative of what is currently claimed. A depiction of formula (I) will not obviate this objection. Depicting compounds of claim 2 may obviate this objection.
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, 3-4 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.
The following issues are found in claim 1:
At the definition for R, “an amine in which the alkyl group is unsubstituted or substituted”. There is lack of antecedent basis in the phrase “in which the alkyl group”. Amines do not inherently have alkyl groups.
At the definition for R, “carbocyclic ring having a heteroatom including, but not limited to….” In chemistry, carbocyclic rings are composed only of carbon. Thus, a carbocyclic ring having a heteroatom is unclear. However, heterocycles may be composed of heteroatoms. In addition, the phrase “including, but not limited to” is ambiguous. It renders the claim indefinite because it is drawn to a variable definition that is open-ended and as such, the scope of the claim is unclear. It is also unclear whether the limitation(s) following the phrase (N, S, and O) are required. See MPEP § 2173.05(d).
G is defined as a five membered aryl group and this is unclear. This can only refer to a cyclopentadiene anion, which is not possible to be present in this compound.
G is defined as a “saturated carbocyclic ring or unsaturated carbocyclic ring containing a heteroatom.” In chemistry, carbocyclic rings are composed only of carbon. Thus, a carbocyclic ring having a heteroatom is unclear. However, heterocycles may be composed of heteroatoms.
The definition for Y recites that Y “is not limited to”
PNG
media_image7.png
57
263
media_image7.png
Greyscale
. This makes the claim unclear because the claim does not point out the full scope of Y, what is Y.
After the definition for Y the claim recites:
PNG
media_image8.png
30
186
media_image8.png
Greyscale
. This lacks antecedent basis because the definition for Y does not recite that Y may be absent.
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.
Claim 2 is 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. The claim depends of claim 1 but it contains compounds that are outside of the scope of claim 1. Note compound I-60. 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.
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.
Claim(s) 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tan et al. (WO 2020/239124).
The prior art teaches the compound of formula
PNG
media_image9.png
100
208
media_image9.png
Greyscale
in at least page 68, or a salt thereof, to be used in pharmaceutical compositions with a pharmaceutically acceptable carrier (page 16), and alone or in combination with a second therapeutic agent. It reads on compound I-30 of claim 2.
Conclusion
Claims 1-4 are rejected. No claim is in condition for allowance.
The elected species appears allowable.
Note to Applicants
Not every piece of prior art found in the search has been applied against the instant claims. See MPEP 904.03.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VALERIE RODRIGUEZ-GARCIA/ Primary Examiner, Art Unit 1621