DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s election without traverse of Group I, and species of
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, in the reply filed on April 3, 2026 is acknowledged.
3. Examination followed guidelines provided by MPEP 803.02. The elected species appeared to be allowable. Therefore, the search and examination was extended. Prior art was found that anticipates nonelected species. The Markush claims were rejected and claims to nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species and the nonelected species shown below.
4. Claims 94, 200 and 204 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter. Election was made without traverse in the reply filed on April 3, 2026.
Information Disclosure Statement
5. The information disclosure statements (dated April 3, 2026 and May 22, 2024) were in compliance with the provisions of 37 CFR 1.97and 37 CFR 1.98. The statements were considered. Signed copies of form 1449 are enclosed herewith.
Claim Rejections - 35 USC § 112
6. Claims 1-4, 56, 65, 154-167, 175, 179 and 191 rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of Formula I is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the core is defined by variables X, Y, Q, Z which results in various substantially different structures.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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.
7. Claim(s) 1, 4, 56 and 93 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 790-22-7 (
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). The reference has a date of 1984 which antedates the present claims having an effective filing date of 2022 and priority claim to application dated 2021. The compound corresponds to the present claims in the following manner: X=Y=CH; Z=phenyl; Q=C(R7=H); R1-R6=R8-R10=H.
8. Claim(s) 1, 3, 56 and 93 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 127958-22-9 (
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). The reference has a date of 1990 which antedates the present claims having an effective filing date of 2022 and priority claim to application dated 2021. The compound corresponds to the present claims in the following manner: X=Y=N; Z=phenyl; Q=C(R7=H); R1-R6=R8-R10=H.
9. Claim(s) 1, 2, 56 and 93is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 2604406-89-3 (
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). The reference has a date of March 5, 2021 which antedates the present claims having an effective filing date of April 25, 2022 and priority claim to application dated April 26, 2021. The compound corresponds to the present claims in the following manner: X=N; Y=CH; Z=phenyl; Q=C(R7=halo); R1-R2=R4-R6=R8-R10=H; R3=Me.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN JAE YOO whose telephone number is (571)272-9074. The examiner can normally be reached Mon-Fri 8-5.
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/SUN JAE YOO/ Primary Examiner, Art Unit 1621
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