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 .
DETAILED ACTION
Claims 11 and 16-30 are pending in the application. Claim 11 is rejected. Claims 16-30 are withdrawn from further consideration.
Election/Restrictions
The instant claims are being examined according to MPEP 803.02 which notes: “If the Markush claim is not allowable, the provisional election will be given effect and examination will be limited to the Markush claim and claims to the elected species, with claims drawn to species patentably distinct from the elected species held withdrawn from further consideration.” In this situation, none of Applicant’s claims embrace the elected species and therefore examination has been limited to Markush-type claim 11 with all other claims withdrawn.
The search and examination was extended to include the species cited below under 35 USC 102, which is not allowable.
Claims 16-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species or invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 12th, 2025.
Response to Amendment / Argument
On page 6 of the response filed April 3rd, 2026, Applicant traverses the improper Markush grouping rejection as it might apply to claim 11. Applicant refers to “the same use;” however this is only one prong of the analysis. Regarding the common structure, Applicant asserts “they clearly fulfill the same purpose in view of the disclosure and should be considered an art recognized class because it is well known that each member can be substituted for each other with the expectation that the intended result will occur.” As noted in the rejection, the structural similarity is physical, chemical or art-recognized class. Applicant provides no basis in the art for the cited assertion and appears to be relying on the instant disclosure itself to establish an art-recognized class. The instant disclosure, however, does not establish an “art-recognized class”. For these reasons, the improper Markush grouping rejection is made over claim 11.
All other rejections made in the previous Office Action that do not appear below have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these objections and rejections will not be addressed.
Improper Markush Grouping
The nonstatutory Markush grouping rejection is based on a judicially approved “improper Markush grouping” doctrine. A Markush claim contains an “improper Markush grouping” if: (1) The species of the Markush group do not share a “single structural similarity,” or (2) the species do not share a common use. Members of a Markush group share a “single structural similarity” when they belong to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the specification or known in the art to be functionally equivalent. When an examiner determines that the species of a Markush group do not share a single structural similarity or do not share a common use, then a rejection on the basis that the claim contains an “improper Markush grouping” is appropriate. See the Federal Register, Vol. 76, No. 27, dated February 9, 2011, page 7166.
Claim 11 is rejected under improper Markush grouping as the claims contain an improper grouping of alternatively useable species. In the present case, at least (1) applies. It cannot be said that all members of the Markush group have a single structural similarity.
The structures embraced by the permutations of -Y-X- encompass varying heterocyclic structures not recognized as belonging to the same physical or chemical class. For example, in the CPC classification system:
compounds containing a 5 or 6-membered oxygen containing heterocycle (corresponding to structures where the partial structure -Xa-Ya- is *-O-(C=X1a)-** or where the partial structure -Xb-Yb- is *-O-C(=S)-**) are classified in various locations including C07D 307/33.
compounds containing a 5 or 6-membered sulfur containing heterocycle (corresponding to structures where the partial structure -Xa-Ya- is *-S-(C=X1a)-** or where the partial structure -Xb-Yb- is *-S-C(=O)-**) are classified in various locations including C07D 333/32.
compounds containing a 5 or 6-membered nitrogen containing heterocycle (corresponding to structures where the partial structure -Xa-Ya- is *-NH-(C=X1a)-** and the structure of formula I-c) are classified in various locations including C07D 207/267;
compounds containing a 5-membered nitrogen and sulfur containing heterocycle (corresponding to structures where the partial structure -Xb-Yb- is *-NH-SO2-**) are classified in various locations including C07D 275/02.
Therefore, it cannot be said that all members of the Markush group have a single structural similarity with respect to the functional groups present and the claims therefore are considered to contain an “improper Markush grouping”. Each one of the four groups above represents its own proper Markush grouping.
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.
Claim(s) 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson et al. Aust. J. Chem., 1971, 24, 1643-1658.
Johnson et al. teach the following compound (12) on page 1647:
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The prior art teaches the corresponding name 5-hydroxy-5-methyl-4-phenylhexanoic acid lactone on page 1657. The compound is embraced by formula (I-a) where Ar is unsubstituted phenyl, each R1 is C1 alkyl, R2 is hydrogen, Za is an unsubstituted dimethylene group and the partial structure -Xa-Ya- is *-O-C(=X1a)-** where X1a is oxygen.
Conclusion
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 MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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