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 .
Priority
2. The instant application is a national stage entry of PCT/CA2022/050296, filed March 2, 2022, which claims priority to U.S. Provisional Application no. 63/155,634, filed March 2, 2021.
Information Disclosure Statement
3. The information disclosure statements (IDS) submitted on October 3, 2024 and January 23, 2026 were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS documents were considered. A signed copy of each form 1449 is enclosed herewith.
Election/Restrictions
4. Applicant’s election without traverse of Group I in the reply filed on January 23, 2026 is acknowledged.
5. In accordance with the MPEP 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
6. As per MPEP 803.02, the Examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species
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makes a contribution over the prior art of record. Therefore, according to MPEP 803.02: should the elected species appear allowable, the search of the Markush-type claim will be extended. The Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration. It has been determined that the entire scope claimed is not patentable.
Status of Claims
7. Claims 1, 3, 7, 11, 15, 19, 21, 26-27, 32-34, 36, 38, 41, 43, 45-46, 49, and 52 are pending in the instant application. Claims 15, 27, 32-33, 36, 45-46, 49, and 52 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention and species. Therefore, claims 1, 3, 7, 11, 19, 21, 26, 34, 38, 41, and 43 read on an elected invention and species and are therefore under consideration in the instant application.
Claim Rejections - 35 USC § 112
8. 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. Claims 1, 3, 7, 11, 19, 21, 26, 34, 38, and 43 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.
The claims recite the limitations as follows:
“
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”
but this limitation is unclear. It appears, based on the specification examples and definitions, that Applicant is attempting to encompass an invention where “all available hydrogen atoms are optionally replaced with a halogen atom and/or all available atoms are optionally replaced with an alternative isotope thereof;” however, as currently claimed, the claims are indefinite (See instant Specification at [0070] noting that groups may be substituted, but no mention of atoms, particularly hydrogen). As currently written, the claims are chemically incorrect as hydrogen atoms do not have a valance that allows for “substitution” by halogen atoms and not every available atom, mainly H atoms, allow for substitution by alternative isotopes. Examiner cannot ascertain the metes and bounds of the claimed scope. Appropriate clarification/correction is required.
Claim Rejections - 35 USC § 102
10. 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 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.
11. 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. Claims 1, 3, 7, 11, 19, 21, 26, 38, and 43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2009/0062367.
US 2009/0062367 teaches
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in Scheme 2 which anticipates the instantly claimed compounds of formula I-B, wherein A is Br, R1 is H, R2 is H, R3 is H, R4 is H, R5 is H, n is 0, R15 is H, R13 is D, R14 is D, R16 is CD3.
Allowable Subject Matter
13. Claim 41 is objected to for depending on a rejected base claim.
Conclusion
14. No claims allowed.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha Shterengarts whose telephone number is (571)270-5316. The examiner can normally be reached on Monday thru Thursday 9-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMANTHA L SHTERENGARTS/Primary Examiner, Art Unit 1623
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