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 .
Election/Restrictions
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Extensively amended claims, new claims and claims with confusing ‘claim identifiers’ are filed along with response to Restriction Requirement on 10/15/2025.
It is clear that Applicant’s election is drawn to product claims. However, in view of confusing claim identifier (Withdrawn-New), pending compound/product claims indicated as not withdrawn are examined together. As such claims 1-3, 6, 7, 11-15, 18, 19, 22 and 24 are examined
It is suggested that Applicant file clean copy of claims such that navigating through the intended limitations of the claims is less thorny.
Claims 8-10, 20, 21, 23, 25 are withdrawn from consideration.
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 1 and dependent claims 2-3, 6, 7, 11-15, 19, 22 and 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.
Base claim 1 is drawn to variables that are defined with specific and generic terms for substituents on the given Formula I. Consider for example the variable A, pyrazole substituted with phenyl (optionally substituted) . While one of skill in the art at once knows what a pyrazole is, lack of recitation of point of attachment(s) of the pyrazole to rest of the molecule is unclear, because there are 4-points to which pyrazole could be linked to rest of the Formula I. Further with the mandatory optionally substituted phenyl limitation, the recitation of the point attachment renders the A possibilities vague and indefinite. (For more on the significance of the point of attachment see later in the context of rejection of dependent claims). In addition, the recitation
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raises the issue of ‘selection within claim: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. ... The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Similarly, consider the point of attachment relating to the variables R1 and B. The point of attachment of R1 is defined with specificity while for B, it is vague and indefinite, because, B is defined with large number of generic terms layered on top with generically defined substituents. See more on B later.
Claim 2 is redundant because it does not further limit its parent claim.
Dependent claims 2-3, 6, 7, 11-15, 19, 22 and 24 do not solve the problems of the base claim 1.
For example, see attachment issues (explained above0 in claims 6 and 7, in the context of withdrawn claims 8-9 which include these isomeric possibilities of base claim, but included in non-wtihdrawn claims, causing confusion Similarly, claims 13 and 15 recites many heterocycles having the point of attachment issues as well as selection within claim issues discussed for the base claim 1. With the combination of all the issues explained above, the metes and bounds of the claims is/are unclear, such that a comprehensive patent search for the claims 2-3, 6, 7, 11-15, 19, 22 and 24 is not possible.
Claim 18 is objected to as being dependent upon a rejected base claim 1, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
A patent search for compounds of claim 18 returns no prior art hits.
Closest art is found in US 20230265103, drawn to compounds. The difference is C-N instead of the instant C=N sharing the two rings in the pictured in the bicyclic ring
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIZAL S CHANDRAKUMAR whose telephone number is (571)272-6202. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NIZAL S CHANDRAKUMAR/Primary Examiner, Art Unit 1625