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 .
Claims 1, 6, 7, 12, 13, 15, 16, 18, 21, 23, 24, 32, 34, 35, 38, 40, 41, 46, 52-54, 58, 60, 62, 66, 68, and 69 are pending in the instant application. Claims 54, 58, 60, 62, 66, 68, and 69 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected subject matter. The withdrawn subject matter is patentably distinct from the elected subject matter as it differs in structure and element and would require separate search considerations. In addition, a reference which anticipates one group would not render obvious the other. Claims 1, 13, 23, 38, 52, and 53 are rejected. Claims 6, 7, 12, 15, 16, 18, 21, 24, 32, 34, 35, 40, 41, and 46 are objected.
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1, 6, 7, 12, 13, 15, 16, 18, 21, 23, 24, 32, 34, 35, 38, 40, 41, 46, 52, and 53, and the species of Compound No. 100, in the response filed on December 31, 2025 is acknowledged. The traversal is on the ground(s): there is no undue burden. This not found to be persuasive because the inventions are independent and distinct because there is no patentable co-action between the groups and a reference anticipating one member will not render another obvious. Each group is directed to art recognized divergent subject matter which require different searching strategies for each group. Moreover, the examiner must perform a commercial database search on the subject matter of each group in addition to a paper search, which is quite burdensome to the examiner. Therefore, the restriction requirements are still deemed proper and are hereby made final.
The examiner will follow the guidelines of MPEP 803.02 wherein once a species is elected, it is examined for compliance with all applicable statutes for patentability and if compliance is found, then the examination is expanded to a reasonable number of elected species to determine whether they also comply with the statute. The examiner will determine whether the entire scope of the claims is patentable according to MPEP 803.02.
Applicant's elected species appears allowable over the prior art of record. Therefore, according to MPEP 803.02: should no prior art be found that anticipated or renders obvious the elected species, the search of the Markush-type claim will be extended. If prior art is found that anticipated or renders obvious the Markush-type claim with respect to a nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration. The search of the Markush-type claim has been extended to the non-elected species wherein:
X¹ is -(C1-2 alkylene)-S-Φ or -(C₁-₂ alkylene)-O-Φ wherein Φ is a bond to A¹; X² is C1-3 alkylene; X³ is C1-3 alkylene; and the rest of the variables are as described in the claims.
As prior art has been found which anticipates the above identified nonelected species, the Markush-type claims are rejected as follows and the subject matter of the claims drawn to nonelected species held withdrawn from consideration. Claims 1, 6, 7, 12, 13, 15, 16, 18, 21, 23, 24, 32, 34, 35, 38, 40, 41, 46, 52, and 53 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since art was found on the nonelected species, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
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.
Claim 52 is 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.
Specifically, claim 52 refers to tables in the specification. Claims must, under modern claim practice, stand alone to define an invention, and incorporation into claims by express reference to the specification is not permitted. Ex parte Fressola, 27 USPQ 2d 1608 (1993). This rejection can be overcome by amending the claim to include the structures found in the tables referenced (i.e., tables 1 and 9).
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.
Claim 13 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.
Specifically, the claim is drawn to a compound of claim 12, wherein the compound is represented by Formula I-A but claim 12 is also drawn to a compound represented by Formula I-A; therefore, claim 13 fails to further limit claim 12. 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
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.
Claims 1, 23, 38, and 53 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US 2005/0154043 A1.
US 2005/0154043 A1 discloses compounds of Formula I and pharmaceutical compositions thereof (see abstract), such as the compound N-(3-chlorobenzyl)-2-(2-Chlorophenoxy)-N-(R)-pyrrolidin-2-ylmethyl-propionamide, which anticipates a compound and a pharmaceutical composition thereof of the claims wherein X¹ is -(C₂ alkylene)-O-Φ wherein Φ is a bond to A¹; X² is C1 alkylene; X³ is C1 alkylene; A1 is phenyl; R1 is halogen; A2 is a 5-membered heterocycloalkyl; and A3 is phenyl substituted with halogen.
Claim Objections
Claims 6, 7, 12, 15, 16, 18, 21, 24, 32, 34, 35, 40, 41, and 46 are objected to for depending on a previous rejected claim. However, even if the claims are amended to be in independent form, they would still not be in condition for allowance because they contain non-elected subject matter. In other words, the subject matter or species which are not embraced by the elected embodiment or the above identified nonelected species have been withdrawn from further consideration.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622