DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (claims 1-5) and a species of Formula 1, compound 1-13 in the reply filed on 01/07/2026 is acknowledged.
Examiner searched the elected compound 1-13 and found it to be free of the art. Examiner then expanded the search to compound 1-12 and found art.
Claims 3 and 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and/or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/07/2026.
Priority
Examiner acknowledges that, according to the Filing receipt received 12/06/2023, that the instant application 18/274,864 filed 07/28/2023 is a 371 of PCT/KR2022/001117 filed 01/21/2022 which claims foreign priority of Republic of Korea application 10-2021-0012749 filed 01/29/2021.
Information Disclosure Statement
The Information Disclosure Statements filed on 07/28/2023 and 01/16/2026 are in compliance with the provisions of 37 CFR 1.97 and have been considered in full, except for citation nos. 35-38 which were not furnished with the IDS filed 01/16/2026 and have been lined through. A signed copy of list of references cited from the IDS is included with this Office Action.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the abstract contains language which can be implied, "The present invention relates to".. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1-2 and 4-5 are objected to because of the following informalities:
Claims 1-2 and 4-5: all instances of “Wherein” should read “wherein”;
Claim 1 uses commas “,” and semicolons “;” inconsistently which may cause confusion. Examiner suggests amending the claims such that commas separate members of a list and semicolons separate each of “1)”, “2)”, etc. (e.g., “L’ is selected from a group consisting of a single bond, C1~C10 alkylene group, C2~C10 alkenylene group, and –(CnH2n)-O-(CnH2n)-; 7) * represents a position bonded to L, *1 represents a position bonded to Ar;”);
Claim 1: “L’ is selected from a group consisting of” should read “L’ is selected from the group consisting of”;
Claim 5 does not end in a period.
Appropriate correction is required.
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.
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 and 4-5 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.
Claims 1-2 and 4-5 recite “a… derivative… thereof”. The term “derivative” is indefinite as a derivative does not have a defined structure known in the art. For example, one could not ascertain to what degree a “derivative” may differ from the parent structure, resulting in millions of possibilities. One could not possibly envisage all the possibilities of a derivative of any compound of the instant invention.
Claim 1 recites “a… heterocyclic group comprising at least one heteroatom of N and O”. This causes confusion as it is unclear whether “and” means that at least one of N and one of O must be present in the heterocyclic group, or that at least one of N or one of O must be present in the heterocyclic group. Clarification is requested. Claims 2 and 4 require the limitation at issue and are similarly rejected.
Claim 1 recites “the alkyl group, the alkenyl group, the alkoxy group, the aryl group, the arylalkyl group, the alkylene group, the alkenylene group, the arylene group, the aliphatic ring group, the heterocyclic group, and the fused ring group”. These limitations lack antecedent basis as multiple instances of “alkyl group”, “alkoxy group”, etc. are recited in the claim. It is unclear which “alkyl group” is being referred to, etc.
Claim 4 recites “the position bonded to R1”. This limitation lacks antecedent basis.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2 and 4-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for stereoisomers, tautomers, hydrates, and pharmaceutically acceptable salts, does not reasonably provide enablement for solvates. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The claims are drawn to solvates of Formula 1. However, the numerous examples presented all failed to produce a solvate. These cannot be simply willed into existence and are not considered predictable in the art. As was stated in Morton International Inc. v. Cardinal Chemical Co., 28 USPQ2d 1190 “The specification purports to teach, with over fifty examples, the preparation of the claimed compounds with the required connectivity.” Hence, applicants must show that solvates can be made, or limit the claims accordingly.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection 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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 and 4-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Number 851686-74-3 (2005; IDS filed 01/16/2026).
CAS discloses a compound with Registry Number 851686-74-3 as below.
PNG
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148
422
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Greyscale
This compound is identical to that of compound 1-12 in claim 5.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELINE E BRAUN whose telephone number is (703)756-4533. The examiner can normally be reached M-F 8:30am-5:00pm ET.
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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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/M.E.B./Examiner, Art Unit 1624 03/12/2026
/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624