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
Status of Claims
Claims 1,4,7,9-12,14,16,20-26,28 and 30 are pending in the instant application. Claims 10-12,22-25,28 and 30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 1,4,7,9,14,16,20-21 and 26 is contained herein. Applicant’s elected species was found free of the art and the search extended to cover scope of formula I.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 1/29/2026 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 4/29/2026.
Status of Rejections
35 USC § 112 (b)
The rejection of claims 1,4,7,9,14,16,20 and 26 is maintained.
Applicant’s arguments, see Remarks, filed 4/29/2026, with respect to the rejection set forth in the Non-Final Office Action mailed 1/29/2026, have been fully considered but are not found persuasive.
To reiterate the original rejection of record, In the instant claim 1 Applicant recited the following language regarding variable Z (now limited to 2 specific heterocycles in the most recent:
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(in particular the language “provided that at least one Z”). The latter language is unclear since formula I recites that there is only one variable Z which is firmly set as being selected from one embodiment (e.g. heterocyclyl, etc.). This variable may be part of a repeating group set by variable n if greater than 1 and thus may have several units containing this only variable Z. Thus, what does Applicant intend by the “at least one Z”? This could imply that variable Z could possibly embrace different embodiments for Z in the formula I wherein n is greater than 1 (i.e. a combination of repeating linkers where Z is not constant but is different). Thus the language is ambiguous and the claim and claims dependent on it which do not rectify the issue are considered indefinite. In terms of prior art and interpretation, the examiner will assume for the time being that Z can only be set as one particular embodiment if n is greater than 1 (claims now state that n = 2). See In re Zletz, 13 USPQ2d 1320, 1322, “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Applicants argue that the claim makes clear that variable Z within a compound may differ from one another and that one skilled in the art would have understood the latter. The examiner respectfully disagrees.
Formula I is clearly shown below with respect to the repeating unit “Z-B”:
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. This formula clearly states that when n = 2, variable Z is locked into only one particular embodiment and must be repeated. There is nothing in the chemical formula to suggest that one singular compound can embrace different embodiments for this variable as a repeating unit and are interchangeable. If that was true, it could also be suggested that variable B may differ in each embodiment as well which Applicant indeed has not argued. However, one skilled in the art can clearly see from the formula that both “Z” and “B” must contain the same embodiments for each repeating unit and are not interchangeable with other possible embodiments. The claims must be given their broadest reasonable interpretation in light of specification (see MPEP 2111). The broadest reasonable interpretation does not mean the broadest possible interpretation. Rather, the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999). As one viewing the formula I would construe the repeating linker as a constant with fixed embodiments for Z and B. Thus the rejection is maintained.
35 USC § 112 (d)
The rejection of claim 21 is maintained.
Applicant’s arguments, see Remarks, filed 4/29/2026, with respect to the rejection set forth in the Non-Final Office Action mailed 1/29/2026, have been fully considered but are not found persuasive.
To reiterate the rejection of record; claim 21 does not further limit claim 1 with respect to the following chemical species wherein the variable Z in the repeating unit Z-B does not contain a constant group for said variable but appears to be a combination of various embodiments for Z (e.g. heteroaryl and alkyl):
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. As stated above regarding claim interpretation; the examiner and one skilled in the art clearly views from the formula I that Z can only be set as one particular embodiment in the repeating unit and not a combination thereof. Thus the rejection is maintained.
New Rejections
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 1,4,7,9,14,16,20 and 26 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 pre-AIA the applicant regards as the invention.
In claim 1, the limitation wherein “two R3” may be taken together to form a cycloalkyl is considered indefinite since variable R3 contains heteroatoms:
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. Thus how could the combination together form any cycloalkyl? This reasoning also applies to variable R4 as well (see language wherein two may form cycloalkyl). Thus the language is ambiguous and the claim and claims dependent on it which do not rectify the issue are considered indefinite. Correction is required.
Claim Rejections - 35 USC § 112
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 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], 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 21 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 21 does not further limit claim 1 with respect to the following chemical species wherein the compound does not possess the amido moiety for variables R3,4 or the two of the latter forming additional rings as required by claim 1:
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.
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.
Conclusion
No claims are allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
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