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 .
DETAILED ACTION
Status of the Claims
Claims 1, 6, 10-11, and 13-15 are pending and are examined on their merits.
Information Disclosure Statement
The Information Disclosure Statement filed on April 6th 2026 is in compliance with the provisions of 37 CFR 1.97 and has been considered in full. A signed copy of references cited from the IDS is included with this Office Action.
35 U.S.C. § 112(d) Rejections Overcome by Amendment
Applicant’s amendments to claim 14 and 15 in the response filed on April 6th 2026 are acknowledged. Applicant has amended the claims to each be dependent only on claim 1. The 112(d) improper multiple dependency rejections are thereby withdrawn.
35 U.S.C. § 112(b) Rejections Maintained
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.
The rejection of claim 13 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 is maintained.
Applicant’s amendment to claim 1 in the response filed on April 6th 2026 is acknowledged. Applicant has amended claim 1 to require that Y is an O-heterocycle group, and R1 is an aryl or heteroaryl group.
As noted in the previous rejection (see below), the structures recited in claim 13 include a heterocyclic group in the Y position and an O-heterocycle in the R1 position. The compounds of claim 13 therefore remain outside the scope of claim 1, upon which claim 13 depends, and the 112(b) rejections over claim 13 are maintained.
35 U.S.C. § 112(b) Rejections Reiterated
Claim 13 is indefinite for failing to further limit the compounds of claim 1. Specifically, the Y-R1 combinations recited in the claim do not fall into the scope of the compounds of claim 1. For example, claim 1 allows for Y to be either 4-8 membered heterocyclyl or O-4-8 membered heterocyclyl. Claim 13 recites compounds in which no heterocyclyl group is present:
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Additionally, in the compounds in which a proper Y group is present, a proper R1 group is not. Claim 1 allows R1 to be a 4-12 membered heteroaryl. The compounds of claim 13 each recite either an O-heteroaryl, ex:
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in the corresponding R1 position.
35 U.S.C. § 112(a) Rejections Maintained
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 and its dependent claims 2, 6, 10, 11, 14, and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant’s amendment to claim 1 in the response filed on April 6th 2026 is acknowledged. Applicant has amended claim 1 to require that Y is an O-heterocycle group, and R1 is an aryl or heteroaryl group.
As noted in the previous rejection (see below), Applicant is considered only to have possession of compound of Formula (I) wherein Y is a 4-8 membered heterocyclyl and R1 is O-heterocyclyl or O-4-12 membered heteroaryl. The 112(a) rejections are thereby maintained.
35 U.S.C. § 112(a) Rejections Reiterated
Claim 1 is directed to a compound of Formula (I):
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wherein Y is either 4-8 membered heterocyclyl or O-4-8 membered heterocyclyl and R1 is 4-12 membered heteroaryl. Applicant provides no embodied species that fall into the genus of claim 1. The embodiments provided that are most similar to applicant’s compound genus include a heterocycle in the Y position and O-heteroaryl in the R1 position. For example,
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As applicant has not demonstrated possession of the compounds of Formula (I), applicant’s written description is considered inadequate to support claims 1, 2, 5, 6, 10, 11, 14, and 15 as currently written. Applicant will only be considered to have possession of compound of Formula (I) wherein Y is a 4-8 membered heterocyclyl and R1 is O-heterocyclyl or O-4-12 membered heteroaryl.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anthony Seitz whose telephone number is (703)756-4657. The examiner can normally be reached 7:30 AM ET - 5:00 PM ET M-F.
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/A.J.S./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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