DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant’s election without traverse of compound 1 (
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) in the reply filed on November 18, 2025 is acknowledged.
3. Examination followed guidelines provided by MPEP 803.02. The elected species appeared to be allowable. Therefore, the search and examination was extended. Prior art was found that anticipates the claims with respect to a nonelected species. The Markush claims were rejected and claims to nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species, the full scope of claims 21, 25, 48 and 52, and further to the extent of the nonelected species shown below in this office action.
4. Claims 19, 20, 22-24, 26-29, 35, 36, 46, 47, 49-51, 53-58, 60, 61, 64 67, 69, 70, 73-83, 85, 86, 89, 91-100, 103, 107, 110, 113, 116, 117, 120-128, 132, 133, 135, 137-147, 151, 152, 156, 160, 162, 163, 167, 168, 171, 175, 176, 179 and 181 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter. Election was made without traverse in the reply filed on November 18, 2025.
Status of Claims
5. Claims 1-3, 5, 6, 10, 12, 13, 16-31, 34-36, 38, 39, 42, 44-58, 60, 61, 64, 67, 69, 70, 73-83, 85, 86, 89, 91-100, 103, 107, 110, 113, 116, 117, 120-128, 132, 133, 135, 137-147, 151, 152, 156, 160, 162, 163, 167, 168, 171,175, 176, 179, 181, 185 and 186 are pending.
6. Claims 1-3, 5, 6, 10, 12, 13, 16, 17, 18, 21, 25, 30, 31, 34, 38, 39, 42, 44, 45, 48, 52, 185 and 186 are elected. Claims 1 and 185 are independent.
Information Disclosure Statement
7. The information disclosure statements (dated May 17, 2024 and November 18, 2025) were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The statements were considered. Signed copies of form 1449 are enclosed herewith.
Claim Objections
8. Claims 21, 25, 48 and 52 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
9. Claim 1 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.
Variable R20C is defined twice, once of page 2 line 8 and also on page 3 line 20. It is not possible to ascertain the structural limitations for this component as the two definitions provide different embodiments. Appropriate correction is required. For the purpose of examination, the first definition of variable R20C was used.
10. Claim 42 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.
The claim depends from claim 40 which has been cancelled. Furthermore, the claim does not fully define the structure of the compounds. For this reason, the metes and bound of the claims cannot be ascertained. This claim was not further examined on the merits because the structural limitations could not be determined.
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 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.
11. Claims 3 and 10 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 refers to variable R3 = -H, C1-6 alkyl optionally substituted with R’, -N(R’)2, or -OR’. Claim 3 depends from claim 2 which defines R3=-LA-R30. The embodiment of C1-6 alkyl optionally substituted with R’ from claim 3 is not present in the definition of R3 in claim 2. Based on the definition of R3 in claim 2, if R3=optionally substituted C1-6 alkyl it can only optionally be substituted with 1-3 groups independently selected from halo, -OH, -CN, -NO2, -CF3, -CH3, -CH2OH or -C(CH3)3. Therefore, claim 3 is directed to an embodiment in addition to that present in claim 2 and thus does not further narrow. Similarly, claim 10 (which depends from claim 2) refers to R20a and R20b as having the embodiment of C1-6 alkyl optionally substituted with R’ whereas in claim 2 if R20a= and R20b=optionally substituted C1-6 alkyl they can only optionally be substituted with 1-3 groups independently selected from halo, -OH, -CN, -NO2, -CF3, -CH3, -CH2OH or -C(CH3)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
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.
12. Claim(s) 1-3, 5, 6, 10, 12, 17, 18, 30, 31, 34, 38, 39, 44, 186 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2019154257. The reference has a publication date of August 15, 2019 which antedates the present claims having an effective filing date of November 22, 2021 and priority claim to provisional applications dated November 25, 2020.
The reference teaches compounds such as
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(page 16, compound 1) which corresponds to the present claims in the following manner: R1a=R1b=R2a=R2b=R4a=R4b=R6a=R6b=R7a=R7b=R11a=R11b=R12a=R12b= -LA(bond)-R30(=R’=H); n=1; R3=R13=-LA(bond)-R30(=R’=alkyl); R10=-H; D=
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; R21=-LA(bond)-R30(=R’=methyl); R20a and R20b from oxo; R31a=R31b=H; R5=Me.
13. Claim(s) 1-3, 5, 6, 10, 12, 13, 16, and 45 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 2369000-50-8 (
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). The reference has a publication date of August 27, 2019 which antedates the present claims having an effective filing date of November 22, 2021 and priority claim to provisional applications dated November 25, 2020.
The compound corresponds to the present claims in the following manner: R1a=R1b=R2a=R2b=R4a=R4b=R6a=R6b=R7a=R7b=R11a=R11b=R12a=R12b= -LA(bond)-R30(=R’=H); n=1; R3=R13=-LA(bond)-R30(=R’=alkyl); R10=-H; D=
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; R21=-LA(alkyl)-R30(=R’=heteroaryl); R20a and R20b from oxo; R31a=R31b=H.
14. Claim(s) 185 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 2368809 (
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). The reference has a publication date of August 23, 2019 which antedates the present claims having an effective filing date of November 22, 2021 and priority claim to provisional applications dated November 25, 2020. The compound corresponds to claimed compound #9 on page 68.
Conclusion
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/SUN JAE YOO/Primary Examiner, Art Unit 1621