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
Election of Species and Status of the Claims
Applicant’s election of a 4-8 membered heterocyclyl or O-4-8 membered heterocyclyl for position Y and 4-12 membered heterocyclyl for position R1 in the response filed on December 3rd 2025 is acknowledged.
Examiner notes that the election of species requirement filed on October 3rd 2025 required the election of a ‘single specific compound.’ A comprehensive response to the election of species requirement would include a single particular compound, identified by either IUPAC name or a complete chemical structure. For example, one single compound from the compounds listed in claim 13.
However, as applicant’s amendments to claim 1 in the response filed on December 3rd 2025 have narrowed the scope of the compound genus of claim 1, the search strategy required to accomplish a complete search of the compound genus has been simplified, and the compound genus is no longer considered a search burden. The election of species requirement is thereby withdrawn.
Claims 1-2, 5-6, 10-11, and 13-15 are pending and are examined on their merits.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 120 is acknowledged. Applicant has complied with all conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 based on the date of the provisional application 63/357,948 filed on July 1st 2022.
Information Disclosure Statement
The Information Disclosure Statement filed on December 3rd 2025 and December 1st 2025 are in compliance with the provisions of 37 CFR 1.97 and have been considered in full. A signed copy of references cited from the IDS is included with this Office Action.
Claim Rejections - 35 USC § 112(d)
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 14 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 14 and 15 are rejected under 35 U.S.C. § 112(d) because a multiple dependent claim may not depend on another multiple dependent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim 13 is 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.
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:
PNG
media_image1.png
95
225
media_image1.png
Greyscale
.
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:
PNG
media_image2.png
109
183
media_image2.png
Greyscale
,
or no such heteroaryl, ex:
PNG
media_image3.png
112
217
media_image3.png
Greyscale
PNG
media_image4.png
135
250
media_image4.png
Greyscale
,
in the corresponding R1 position.
Claim Rejections - 35 USC § 112(a)
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, 5, 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.
Claim 1 is directed to a compound of Formula (I):
PNG
media_image5.png
157
235
media_image5.png
Greyscale
,
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,
PNG
media_image2.png
109
183
media_image2.png
Greyscale
.
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
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.
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 Lundgren can be reached at (571)272-5541. 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.
/A.J.S./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629