DETAILED ACTION
A restriction requirement based on a lack of unity of invention was mailed 20 August 2025 (“Restriction”).
Applicant’s reply to the Restriction was received 18 December 2025 (“Reply”).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12 April 2023; 11 April 2024; and 18 December 2025 are acknowledged and have been considered.
Status of the Claims
The listing of claims filed with the Reply has been considered.
Claims 1, 22, 29, 35, 37, 40, 42, 45, 53–55, 72, 97, 99, 103, 104, 106, 109, 111, 115, 117, 124, 136, 142, 143, 190, 196, 197, 209, 210, 270–272, 301, 303, and 305 are pending.
Claim 53 is amended.
Claims 2–21, 23–28, 30–34, 36, 38, 39, 41, 42, 44, 46–52, 56–71, 72–96, 98, 100–102, 105, 107, 108, 110, 112–114, 116, 118–123, 125–135, 137–141, 144–189, 191–195, 198–208, 211–269, 273–300, 302, 304, and 306–308 are canceled.
Election/Restrictions
Applicant’s election without traverse of Group I in the Reply is acknowledged.
Applicant’s election of species without traverse of compound 176 is also acknowledged.
Scope of Search and Examination
A prior art search and examination will begin with the elected species. (MPEP § 803.02). If no prior art is found that would anticipate or render obvious the elected species, then the search will be extended to other species of the elected group. If no prior art is found that would anticipate or render obvious the elected group, then the search will be extended to non-elected species in non-elected groups. If prior art is found that anticipates or renders obvious a non-elected species or group, then the search will stop and the Markush-type claim will be rejected. The prior art search will not be extended unnecessarily to cover all non-elected species.
Should Applicant overcome the rejection by amending the Markush-type claim, then the claim will be reexamined. The prior art search will be extended to the extent necessary to determine the patentability of the Markush-type claim. If prior art is found during reexamination that anticipates or renders obvious the amended Markush-type claim, then the claim will be rejected, any claims to the nonelected species will be held withdrawn from further consideration, and the Office action will be final.
The elected species was searched and is free of the prior art.
The search was expanded to non-elected species, including the compounds in claim 270 and the compounds of Formula I in claim 1 in which: L1 = C1-alkyl; L2 = bond; Ring A =
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or
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; L3 = O, N(H), or N(alkyl); Ring B = formulae (B-I), (B-II), or (B-III); L4 = Z1Z2, Z1 = O, Z2 = C1-alkyl; and Ring C = phenyl, 1,2-pyrazolyl, or piperidinyl; are those compounds are free of the prior art.
The search was expanded further until a prior art compound was discovered that renders Markush-type claim 1 unpatentable. The search was stopped; claim 1 is rejected. The remaining claims, other than claim 270, are withdrawn until claim 1 is amended to overcome the rejection.
Claim Rejections - 35 U.S.C. § 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 1 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by the compound identified as RN 1051103-45-87, which was indexed in the Registry database in 2008 [IDS].
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RN 1051103-45-87 anticipates Formula I in which:
X1, X3, X5, X6, X7, and X8 = C or CH; and X2 and X4 = N;
T1 = T3 = C(O)OH; and T2 = alkyl;
L1 = C1-alkyl; L2 = S; L3 = alkyl; L4 = bond;
Ring A = 5-membered heteroarylene;
Ring B = formula (B-III), B5A = N; B5B = C, B6A, B6B, B6C = N;
Ring C = 5-membered heteroaryl; and b = 0.
Notice of AIA Status
The instant application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ).
If the status of the application as subject to AIA or pre-AIA is incorrect, any correction of the statutory basis (e.g., changing from AIA to pre-AIA ) for a rejection under 35 U.S.C. §§ 102 and/or 103 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.
Claim Objections
Claim 1 is objected to for minor informalities. Claim 1 defines “Ring A” using bullet points and includes “and” between the second-to-last and the third-to-last options, instead of between the last two options. Furthermore, the last option is listed without a bullet point, which is inconsistent with the other options that have a bullet point. See annotations below.
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To avoid confusion as to whether the last option is within the Ring A options, the term “and” should be recited between the last two options.
Further, all bullet points in claim 1 should be removed because they are unnecessary and may cause an issue with the publication of a patent, if granted.
Appropriate correction is required.
Conclusion
Claim 270 is allowed.
Claim 1 is rejected.
Claims 22, 29, 35, 37, 40, 42, 45, 53–55, 72, 97, 99, 103, 104, 106, 109, 111, 115, 117, 124, 136, 142, 143, 190, 196, 197, 209, 210, 271, 272, 301, 303, and 305 are withdrawn.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Nolan at (571) 272-2480. The examiner can normally be reached Monday through Friday between 9:00–5:00.
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 submit an Automated Interview Request: http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan, can be reached on 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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/JASON M. NOLAN/Patent Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623
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