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 1-2, 4-6, 8-11, 13-14, 17, 23-24, 28-33 and 36-37 are pending in this application.
Election/Restrictions
Applicant’s election without traverse of Group I and a species b. (i.e. X1 = -C- or -C-C-and X2 = -O-; or X1 = O and X2 = -C- or -C-C-) in the reply filed on 01/05/2026 is acknowledged.
The claims are drawn to multiple inventions for reasons set forth in the restriction requirement. The claims are examined only to the extent that they read on the elected invention. Cancellation of the non-elected subject matter is recommended in response to this Office Action. Note that compounds VI-c, VI-d and VI-I in claim 2 for example are non-elected species.
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 1-2, 4-6, 8-11, 13-14, 17, 23-24 and 28-31 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:
a. Claims 1, 10 and claims dependent thereon are rejected because variable X2 is missing or chopped from the compound formula VI.
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Where is variable X2 in the formula V or VI? Do applicants intend the variable next to variable X1? It appears the chemical structure was cut and paste into the claims. Applicants have to redraw the chemical structures and show variable X2 clearly in the chemical formula V and VI.
b. In claims 1 and 23, the definition of R3b is not clear. Applicants inserted a chemical structure in the definition of R3b, but the chemical structure is defective (see below).
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The upper bonds from the oxo are overlapping with S. Note that the specification at page 3 show a correct chemical structure. It is recommended that applicants check the chemical structures recited in claims 28-29 and fix the problem for the overlapped chemical structures.
c. In claims 9 and 28, the species recited contain defective chemical structures. The ring oxygen atom in the seven membered ring overlaps with the bond (see below).
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Applicants have to fix the problem in claims 9 and 28 as it was done in claim 8 (see below).
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It is recommended that applicants check the chemical structures recited in claims 28-29 and fix the problem for the overlapped chemical structures.
d. Regarding claim 10, the term "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention. See MPEP § 2173.05(d).
e. In claim 30, the phrase “isotope substitute of the compound” is not clear. What is the isotope substitute of the compound? What is covered and what is not? How can one tell if a compound is isotope substitute? To overcome this rejection, the examiner recommends that applicants delete said claim.
Claim Objections
Claims 28-29 are objected to because of the following informalities: Claims 28-29 are objected to because some chemical structures are faded and not consistent with the other. In claim 28 as shown below for example, the top one is drawn properly with bold bonds but the bottom one is faded. It is recommended that applicants review the chemical structures.
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Appropriate correction is required.
Information Disclosure Statement
Applicant’s Information Disclosure Statement, filed on 05/22/2023 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith.
To expedite prosecution, the examiner recommends that applicants delete non-elected species, delete claims 36-37 that are drawn to non-elected invention of Group II, and also applicants delete “preventing” from the method of use claims and recite specific diseases in claim 32 as it was done in claim 33.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
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, JEFFREY MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Kahsay Habte/
Primary Examiner, Art Unit 1624
Prosecution Insights