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 .
DETAILED ACTION
Claims 7-20, 22 and 25-27 are pending in the instant application.
Election/Restrictions
Applicant’s election without traverse of Group III (now Revised Group I as shown below),
Group I, claims 1-5 and 7-22, drawn to products of Chemical Formula 1 and Chemical Formula 2,
PNG
media_image1.png
170
226
media_image1.png
Greyscale
PNG
media_image2.png
170
358
media_image2.png
Greyscale
and the species of Compound TDH-358, disclosed in paragraph [00442] on pages 108-109 of the instant specification (reproduced below),
PNG
media_image3.png
196
574
media_image3.png
Greyscale
,
in the reply filed on April 21, 2026 was acknowledged in the previous Office Action. The requirement was deemed proper and therefore made FINAL in the previous Office Action.
Claims 6 and 23-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 21, 2026. Claims 6, 23 and 24 have been cancelled per the Amendment filed August 13, 2026.
Drawings
The drawing was received on August 13, 2026. The drawing is acceptable.
Rejections and objections made in the previous Office Action that do not appear below have been overcome by Applicant’s amendments to the claims. Therefore, arguments pertaining to these rejections and objections will not be addressed.
As a result of the current amendments to the claims per the amendment filed August 13, 2026, the following rejections and objection apply.
Claim Objections
Claims 7, 18 and 20 are objected to because of the following informalities:
in currently amended claim 7, under the definition of variable R2, the phrase “and each independently hydrogen” should have been “and are each independently hydrogen” (line 1 of page 4);
in currently amended claim 18, under the definition of variables A2 and A3, an “or” should have been added after “phenyl,” for proper Markush language format; and
in currently amended claim 20, the period added at the end of Compound TDH-555 should have been added at the end of the claim (i.e., outside of the bottom of the table).
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 8, 12 and 14 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.
Currently amended claim 8 is confusing because the R2 variable in claim 8 does not represent “alkoxy” but then claim 8 states “wherein the alkyl, alkoxy, … is unsubstituted or substituted”. Therefore, currently amended claim 8 is indefinite.
Originally filed claim 12 now lacks antecedent basis from currently amended claim 11. Claim 11 is currently amended whereby the definition of variable A3 was amended by deleting the following three rings from its definition,
PNG
media_image4.png
88
246
media_image4.png
Greyscale
and
PNG
media_image5.png
62
102
media_image5.png
Greyscale
, and the definitions of the variables which are a part of these three rings were also deleted. However, a multitude of linkers listed in claim 12 are now affected by the deletion of these three rings from claim 11 so that claim 12 now lacks antecedent basis from claim 11. See, for example, the linker in column 1, row 1 on page 8 in claim 12; the linker in column 1, row 3 on page 8 in claim 12; both linkers on rows 4-6 on page 8 in claim 12; etc. Therefore, claim 12 is now indefinite.
Currently amended Claim 14 lacks antecedent basis from claims 7 and 13 because there is no earlier recitation in currently amended claim 7 for the definition of variable X as found in claim 14 (see the last line of page 9). Independent claim 7 defines variable X as representing N or CH but claim 14 defines variable X as representing C(O) or C(R3)2. Therefore, currently amended claim 14 is indefinite.
Currently amended claim 14 lacks antecedent basis from claims 7 and 13 because there is no earlier recitation in claim 7 for the definition of variable R1 as found in claim 14. Independent claim 7 defines variable R1 as representing –(CH2)n-, aryl, heteroaryl, cycloalkyl, heterocycloalkyl, or -A-(B)-. However, claim 14 defines variable R1 as representing hydrogen, nitro, NH2, etc. (lines 2-3 of page 10). Therefore, currently amended claim 14 is indefinite.
Currently amended claim 14 lacks antecedent basis from claims 7 and 13 because there is no earlier recitation in currently amended claim 7 for the definition of variable R3 as found in claim 14. Independent claim 7 defines variable R3 as representing C1-10alkyl, aryl, heteroaryl, cycloalkyl, or heterocycloalkyl. However, claim 14 defines variable R3 as representing hydrogen or C1-C3 alkyl (lines 4-5 of page 10). Therefore, currently amended claim 14 is indefinite.
Currently amended claim 14 lacks antecedent basis from claims 7 and 13 because there is no earlier recitation in claims 7 and 13 for the definitions of variables A and B as found in claim 14. See lines 13-15 of claim 7 for the definitions of variables A and B and the last two lines of page 11 for the definition of variable A in claim 14 and the last line of claim 14 for the definition of variable B. Therefore, currently amended claim 14 is indefinite.
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 12 and 14 are 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.
Claim 12 now fails to further limit currently amended claim 11 because claim 12 is now broader in scope than claim 11. Currently amended claim 11 does not indicate that the linker moieties can represent a number of linkers listed in claim 12 such as the linker
PNG
media_image6.png
70
144
media_image6.png
Greyscale
(column 1, row 1 on page 8), the linker
PNG
media_image7.png
88
144
media_image7.png
Greyscale
(column 1, row 3 on page 8) due to the amendment to the definition of variable A3 in claim 11.
Claim 14 fails to further limit the claims from which it depends because claim 14 is broader in scope than the claims from which it depends for several reasons. Firstly, the definition of variable X as found in claim 14 is not stated in claims 7 or 13. Secondly, the definition of variable R1 as found in claim 14 is not stated in claims 7 or 13. Thirdly, the definition of variable R3 as found in claim 14 is not stated in claims 7 or 13. Fourthly, the definitions of variables A and B as found in claim 14 are not stated in claims 7 or 13.
Allowable Subject Matter
The elected species of Compound TDH-358, disclosed in paragraph [00442] on pages 108-109 of the instant specification, is free of the prior art of record.
Claims 9-11, 13, 15-20 and 22 are objected to as being dependent upon either a rejected or an objected to base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
This application contains claims 25-27 drawn to an invention nonelected without traverse in the reply filed on April 21, 2026. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144) See MPEP §821.01.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Laura L. Stockton
(571) 272-0710.
The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time.
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 acting supervisor,
James Alstrum-Acevedo can be reached on 571/272-5548. 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.
/LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620
Technology Center 1600
October 5, 2026
Book XXIX, page 61
Prosecution Insights