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 6-20 are pending in this application.
Election/Restrictions
Applicant’s election without traverse of Species A: Piperazine attached to phenyl in the reply filed on 06/22/2026 is acknowledged.
The claims are drawn to multiple inventions for reasons set forth in the restriction requirement. The claims are examined only to the extent that they read on the elected invention. Cancellation of the non-elected subject matter is recommended in response to this Office Action. Note that applicants have also to delete non-elected species such as piperidyl attached to phenyl (Species b.) from claim 17.
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.
Claims 10 and 14-16 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:
a. Claim 10 is rejected because there is no period at the end of the claim. It is recommended that applicants insert a period at the end of the claim. If the chemical structure of Formula (VI) is the end of the claim, applicants have to insert “(VI).” at the end of the claim as it was done in claim 7 (see below).
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b. Claims 14-16 are rejected because the chemical structures in claims 14-16 are not drawn properly. The bonds that connect the N atoms inside the ring are missing or are short and not connecting the N atom in the ring properly.
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The fluoro substituent on the phenyl ring is also not connected well. It is recommended that applicants redraw the defective chemical structures and fix the problem.
Claim Rejections - 35 USC § 112
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.
Claims 6-20 are 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 Species b. (Piperidine attached to phenyl) and Species c. (Others, species not covered by a. or b.) 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: Piperidines attached to phenyl (i.e. species b.) and other heterocyclic or carbocyclic rings attached to a phenyl or to a heteroaryl rings (i.e. species c.) don’t share a substantial structural feature and common use. Claim 6 embraces myriad compounds that are not taught in the specification.
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. In order to overcome this rejection, applicants have to amend the definition of A and variables X, Y, Z according to the elected species. This can be done by amending the claims and limit the definition of A to piperazine and the definition of X, Y and Z to carbon.
Claim Objections
Claim 6 is objected to because of the following informalities: In claim 6 (in the definition of X and Y), the term “,And” is a typographical error. It should read as “, and”. Appropriate correction is required.
Information Disclosure Statement
9. Applicant’s Information Disclosure Statement, filed on 01/29/2024 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
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, JEFFREY MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kahsay Habte/
Primary Examiner, Art Unit 1624
July 13, 2026
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