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 1-65 are pending in the instant application.
Election/Restrictions
Applicant’s election without traverse of Group I,
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and elected the species of the last compound disclosed on page 7 of the instant specification (reproduced below),
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in the reply filed on March 20, 2026 is acknowledged. The requirement is still deemed proper and is therefore made FINAL.
Applicant’s claimed compound genus of instant Formula (I) has a number of variables and their permutations and combinations result in a vast number of compounds that are generically claimed. In an initial attempt to examine the full scope of compounds of elected Group I, over 1,500 Chemical Abstract Registry numbers were recovered in one database search alone. Therefore, the compounds of elected Group I will be examined according to MPEP §803.02.
The claims within elected Group I have been examined to the extent that they are readable on the elected species identified above. Since no prior art was found on the elected species, the examination was expanded within elected Group I until prior art was found, in which case, the examination stopped and prior art has been applied against the claims. Note, MPEP §803.02.
The subject matter of the expanded search and examination thus far, inclusive of the elected species, is as follows:
a compound of instant Formula (I),
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wherein
X1 represents CHR1;
X2 represents CHR2;
X3 represents CHR3;
X4 represents CHR4;
R1 and R2 do not form a ring;
R2 and R3 do not form a ring;
R3 and R4 do not form a ring;
n is 1 to 10;
m is 1 to 10;
L1 is independently selected from N(RN), C(=O) and
C1-6 alkylene;
L2 is independently selected from N(RN), C(=O) and
C1-6 alkylene;
each Y1 and Y2 are independently selected from
hydrogen and NH2;
and
all other variables are as defined in independent
claim 1.
Claims embraced by the above identified search and examination are claims 1-3, 5, 6 and 9.
Subject matter not embraced by the above identified search and examination and Claims 4, 7, 8 and 10-65 are withdrawn from further consideration pursuant to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 March 20, 2026.
It is suggested that in order to advance prosecution, the non-elected subject matter in which rejoinder is not applicable be canceled if Applicant files a response to this Office Action.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement filed on May 23, 2023. The submission is in compliance with the provisions of
37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 3 is 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.
Claim 3 lacks antecedent basis from claims 1 and 2 because of the formula in claim 3,
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Variables m and n are defined in independent claim 1 for instant Formula (I),
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However, in the formula in claim 3, the upper limits of each of variables m and n defined in claim 1 would be exceeded since there are two fixed L1 substituents {i.e., C(=O) and N(RN)} already present in the formula in instant claim 3 and there are two fixed L2 substituents {i.e., C(=O) and N(RN) already present in the formula in instant claim 3. Therefore, claim 3 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.
Claim 3 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.
Claim 3 fails to further limit claims 1 and 2 because claim 3 is broader in scope than claims 1 and 2. Variables m and n are defined in independent claim 1 for instant Formula (I),
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However, in the formula in claim 3, the upper limits of each of variables m and n defined in claim 1 would be exceeded since there are two fixed L1 substituents {i.e., C(=O) and N(RN)} already present in the formula in instant claim 3 and there are two fixed L2 substituents {i.e., C(=O) and N(RN) already present in the formula in instant claim 3.
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
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 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.
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.
Claims 1, 2, 5 and 6 are rejected under
35 U.S.C. 102(a)(1) as being anticipated by:
the compound of PubChem CID 123766702 {National Center for Biotechnology Information. PubChem Compound Summary for CID 123766702, (4-Carbamoyloxy-6-propan-2-yloxycyclooct-2-en-1-yl) carbamate. https://pubchem.ncbi.nlm.nih.gov/ compound/123766702. Accessed May 5, 2026, create date January 25, 2017},
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{a compound of instant Formula (I)
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when
X1 = CHR1;
X2 = CHR2;
X3 = CHR3;
X4 = CHR4;
R1 = hydrogen;
R2 = hydrogen;
R3 = C3 alkoxy;
R4 = hydrogen;
L1 = C(=O);
L2 = C(=O);
n = one;
Y1 = NH2;
m = one; and
Y2 = NH2;
and
the compound of PubChem CID 12696437 {National Center for Biotechnology Information. PubChem Compound Summary for CID 12696437, [(2Z)-4-acetyloxycyclooct-2-en-1-yl] acetate. https://pubchem.ncbi.nlm.nih.gov/compound/2Z_-4-acetyloxycyclooct-2-en-1-yl_-acetate. Accessed May 5, 2026, create date February 8, 2007},
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{a compound of instant Formula (I)
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when
X1 = CHR1;
X2 = CHR2;
X3 = CHR3;
X4 = CHR4;
R1 = hydrogen;
R2 = hydrogen;
R3 = hydrogen;
R4 = hydrogen;
one L1 = C(=O) and the other L1 = C1
alkylene;
one L2 = C(=O) and the other L2 = C1
alkylene;
n = two;
Y1 = hydrogen;
m = two; and
Y2 = hydrogen.
Each of the above cited prior art is embraced by the instant claimed invention as shown above. Therefore, each of the above cited prior art anticipates the instant claimed invention.
Note to Applicant: Not every piece of prior art found in the database search or class/subclass search which would anticipate and/or render obvious the instant claimed invention under examination has been applied against the instant currently pending claims under examination. See MPEP §904.03.
Reminder to Applicant
As a reminder, Applicant should specifically point out the support in the original disclosure {i.e., page number(s) and line number(s)} for any new claims or amended claims and for any amendments made to the disclosure. Making generic statements such as “all amendments are fully supported in the originally filed disclosure or the originally filed claims” without specifying page numbers and originally filed claim numbers are insufficient. See MPEP §714.02 and MPEP §2163.06(I).
Allowable Subject Matter
The elected species of the last compound disclosed on page 7 of the instant specification is free of the prior art of record.
Claim 9 is objected to as being dependent upon a rejected base claim and containing withdrawn non-elected subject matter, but would be allowable if rewritten in independent form including all of the limitations of the base claim and only directed to the searched and examined subject matter indicated above and any intervening claims.
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
May 12, 2026
Book XXIX, page 27
