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 .
Priority
This application is a 371 of PCT/EP2021/087174 (12/22/2021)
and claims foreign priority to EP 20216606.2 (12/22/2020).
Status
Claims 16, 22-24, 28, 34-35, and newly presented 37-48 are pending.
Claim rejections not reiterated are withdrawn.
Election/Restrictions
Applicant's election with traverse of Group I, claims 16-22, in the reply filed on 12/22/25 is acknowledged. The traversal is on the ground(s) that there would not be a search burden. This is not found persuasive because a search of generic formula (2) results in hundreds of thousand results that require consideration and thus presents a search burden.
The requirement is still deemed proper and is therefore made FINAL.
Applicant also elected the species WW-74 having the following structure:
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Corresponding to formula (2) when A2 is CH; A3 is N; A4 is NR11; R11 is S(O)2R22; R22 is phenyl; A5-A8 are CH; L is CHR21; R21 is OH; o is 2; p is 1; R16 and R17 form C=CH-CH3; R18 is C5-alkyl determined to read on claims 16, and 22.
As detailed in the following rejections, the generic claim encompassing the elected species was not found patentable. Therefore, the provisional election of species is given effect, the examination is restricted to the elected species only, and claims not reading on the elected species are held withdrawn. MPEP 803.02; Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App. lnt. 1987). Accordingly, claims 37-48 not reading on the elected species are withdrawn.
Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection through amendment, the amended Markush-type claim will be reexamined to the extent necessary to determine patentability of the Markush-type claim. See MPEP 803.02.
Claim Rejections - 35 USC § 112(b)
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.
Claims 16, and 22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 16’s amended language is: “or a stereoisomer, enantiomer, or racemic
Applicant’s amendment did not clarify the claims sufficiently to make the meaning of the scope of the claims definite. Examiner recommends “or racemic mixture thereof” or “or racemate thereof” as one of skill in the art would find the current language confusing as to what Applicant is referring to.
Thus, claim 16 and those that depend therefrom are indefinite.
New Claim Rejections - 35 USC § 102
Claims 16 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bonjoch et al. (J. Chem. Soc., Chem. Commun. (1991) 27 (23): 1687–1688).
Bonjoch teaches compound 4 (Scheme 1) with the following structure:
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which corresponds to instant claim 16’s formula (2I) when A2 is CR19; R19 is H; A4 is NR11; R11 is H; R12-15 are H; L is CHR21; R21 is H; R16 is H; R17 is ethyl (alkyl); R18 is CH2 (alkyl) substituted with Z2 of phenyl (aryl); Including where the compound is in water which anticipates the claims.
Conclusion
No claims 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 ROBERT H HAVLIN whose telephone number is (571)272-9066. The examiner can normally be reached 9am - 6pm.
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, Kortney Klinkel can be reached at (571) 270-5293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT H HAVLIN/Primary Patent Examiner, Art Unit 1626
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