DETAILED ACTION
This office action is in response to the Applicant’s filing dated June 15th, 2026.
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
This application is a 371 of PCT/GB2022/051181 filed on May 10th, 2022; and claims benefit of foreign priority of GB2106873.9 filed on May 13th, 2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-13 and 20-24 are pending in the instant application. Acknowledgement is made of Applicant’s remarks and amendments filed on June 15th, 2026. Acknowledgment is made of Applicant’s amendment of claims 2-13 and 20-24; and the cancelation of claims 14-19 and 25-26.
Notice of Change of Examiner
Please note that the Examiner prosecuting this application has been changed to Examiner Christopher Johnson of Art Unit 1691. Please address all future correspondences to Examiner Johnson.
Election/Restrictions
Applicant’s election of Group I in the reply filed on June 15th, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant’s election without traverse of Compound 38 shown below in the reply filed on June 15th, 2026 is acknowledged:
PNG
media_image1.png
310
345
media_image1.png
Greyscale
which is a compound of instantly claimed Formula (I) wherein Y1, Y2 and Y3 are each C-R1, and R1 is H; wherein R1 is H; wherein R2 is R7, specifically
PNG
media_image2.png
86
91
media_image2.png
Greyscale
, and R6 is H, and R5 is unsubstituted aryl, specifically phenyl; and wherein R3 and R4 are each H.
A prior art search was conducted for the elected species.
This compound was found free of prior art.
The Examiner did not expand search due to the uncertainties described in the 35 USC § 112(b) rejections below.
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 1-13 and 20-24 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.
Regarding claims 1-13 and 20-24, the instant claims recite formulae and compounds with wavy bond lines as shown below indicated by the arrow:
PNG
media_image3.png
138
232
media_image3.png
Greyscale
The meaning of the wavy bond lines are not indicated in the claims, nor in the specification. Thus, the metes and bounds of the claims are unclear. Appropriate action is required.
Regarding claim 1, the claim recites “R7 is a group of formula:
PNG
media_image2.png
86
91
media_image2.png
Greyscale
”, but there is no attachment point indicated for the formula of R7, thus the metes and bounds of the claim are unclear. Appropriate action is required.
Regarding claims 2-3, the recitation of the phrase "suitably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 4, the claim recites the phrase "e.g." in parenthesis, which renders the claim indefinite because it is unclear whether the limitations following the phrase “e.g.” in parenthesis are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 6, the claim recites the limitation "wherein R6 and R7 are independently selected from H, C1 to C6 alkyl, OH, or OR; or R6 and R7 together with the atoms to which they are attached form a substituted or unsubstituted 6 membered ring" in lines 4-6. There is insufficient antecedent basis for this limitation in the claim.
Regarding claims 21-23, the language “The compound of claim 1 for use” fails to clearly define the metes and bounds of the claims. Particularly, it is unclear whether the Applicant intended the instant claims to be drawn to a compound or a method of treatment. See MPEP § 2173.05(q).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 21-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 21-23, the claims do not clearly fall within at least one of the four categories of patent eligible subject matter because they are drawn to “The compound of claim 1 for use” as recited in claim 21, which is not one of the four categories of patent eligible subject matter. “One cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101") In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961). See MPEP § 2173.05(q).
Conclusion
Claims 1-13 and 20-24 are rejected.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER L JOHNSON whose telephone number is (571)272-1672. The examiner can normally be reached Monday - Friday 08:00AM - 5:00PM EST with Flex on Fridays.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.L.J./Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
Prosecution Insights