DETAILED ACTION
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 .
This is the first action on the merits.
Election/Restrictions
Applicant's election with traverse of Group (I) in the reply filed on March 19, 2026 is acknowledged. Group (I), drawn to the compounds in claim 1, and compositions thereof, embraced by claims 1-2, 7, 10-11, 30, 47-49, 53-54, 63 and 70-73, was elected by Applicant. The traversal is on the ground(s) that no additional burden is present. This is not found persuasive because according to MPEP §803, “For purposes of the initial requirement, a serious search burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02 Similarly, a serious examination burden, for example, may be prima facie shown by appropriate explanation of non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) relevant to one invention that are not relevant to the other invention. A prima facie showing of serious search and/or examination burden may be rebutted by appropriate showings or evidence by the applicant.” As noted in the restriction requirement, each group is classified differently, which requires a different field of search because of the separate status in the art. Applicant has not pointed to any errors in the Examiner’s analysis of the classification of the different inventions. The requirement is still deemed proper and is therefore made FINAL.
Applicant elected the following species:
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, and indicated claims 1-2, 7, 10-11, 30, 70-74, 83, 87, and 90 read on said species. However, claims 74, 83 ,87 and 90 are method claims that were restricted in Group (II).
The elected species was searched and not found. Thus, the search was expanded.
Claims 1, 2, 7, 10, 11, 30, 47-49, 53, 54, 63, 70-74, 83, 87 and 90 are pending and claims 1-2, 7, 10-11, 30 and 70-73 are under examination. Claims 47-49, 53,54 and 63 are withdrawn based on the species election. Claims 74, 83, 87, and 90 are withdrawn based on the restriction requirement.
Specification
The abstract of the disclosure is objected to because of the proper content of an abstract of the disclosure. In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral antidiabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
Correction is required. See MPEP § 608.01(b).
Claim Objections
Claim 11 is objected to because of the following informalities: there are additional periods prior to the end of the claim, e.g., see page 16 of 52, lines 1, 5 and 9. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: there are redundant definitions of, e.g., “wherein R1 is H or -CH3” and
“
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”, e.g., see page 17 of 52. Appropriate correction is required.
Claim Rejections
Claims 1-2, 7, 10-11, 30 and 70-73 are rejected as each directed to an improper Markush group. These Markush claims are rejected under the judicially approved ‘‘improper Markush grouping’’ doctrine when the claim contains an improper grouping of alternatively useable species. In re Harnisch, 206 USPQ 300 (CCPA 1980). A Markush claim contains an ‘‘improper Markush grouping’’ if: (1) the species of the Markush group do not share a ‘‘single structural similarity,’’ or (2) the species do not share a common use. The species of the present claims do not share a ‘‘single structural similarity. Therefore, a rejection on the basis that the claims contain an ‘‘improper Markush grouping’’ is appropriate. The rejection of the claims will be maintained on the basis that the claims contain an ‘‘improper Markush grouping’’ until the claims are amended to include only species that share a single structural similarity and a common use, or the applicant presents a sufficient showing that the species in fact share a single structural similarity and a common use.
Under principles of compact prosecution, the applicant elected a single disclosed species for search and examination (i.e., an election of species). The prior art search did not find the elected species in the prior art, and the search has been extended to those additional species that fall within the scope of a permissible Markush claim. In other words, the search has been extended to the species that share a single structural similarity and a common use. Proper Markush claims will be examined for patentability over the prior art with respect to the elected species or group of indistinct species, as well as the species that share a single structural similarity and a common use with the elected species or group of indistinct species (i.e., the species that would fall within the scope of a proper Markush claim). Federal Register, Vol. 76, No. 27, 02-09-2011, page 7166.
claims 1-2, 7, 10-11, 30 and 70-73, directed to the nonelected species, are withdrawn from further consideration. The prior art search will not be extended unnecessarily to cover all nonelected species.
To overcome the rejection, the claims may be amended to the elected species, wherein X=O, D= C, F= C, E=N, and without forming any other fused rings allowed.
The following 102 rejection is being made, although a species election has been acknowledged, because the species is in the same reference as the species cited in the 103 rejection.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 7, 10, 11, 30 and 71-73 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsumura et al. (JP 2017100953).
The reference teaches the following species:
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, see pages 10 (Reference Example 4), and page 11, lines 6-8, respectively, of the translated portion of the document. These three species are extracted with dichloromethane, a pharmaceutical carrier. Thus, said claims are anticipated.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claim(s) 1, 2, 7, 10, 11, 30 and 70-73 are rejected under AIA 35 U.S.C. 103(a) as being unpatentable over Matsumura et al. (JP 2017100953).
The present application claims compounds of the formula in claim 1, wherein R1= H, R2= H or methyl, R3= H or methyl, R4= H or methyl, R5= H or methyl, R6= H or methyl, R7= H or methyl, R8= H or methyl, R9= H or methyl, R10= H or methyl, R11= H or methyl, R12= H or methyl, R13= S-methyl, R14= not present, X= oxygen, D= CR2R3, E= NH, and F= CR6R7, with one of R1-R14 being a methyl, see the species from claim 70. Page 27 below for comparison:
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,
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with a proviso at the end of claim 1, which states:
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.
The reference teaches compounds of the formula in claim 1, wherein R1= H, R2= H, R3= H, R4= H, R5= H, R6= H, R7= H, R8= H, R9= H, R10= H, R11= H, R12= H, R13= S-methyl, R14= not present, X= oxygen, D= CR2R3, E= NH, and F= CR6R7:
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. see page 6. This compound was removed by proviso of the instant claim 1.
The only difference between the claimed compound and the cited compound is H versus Applicant’s methyl. Since a methyl group is considered a homolog of hydrogen these compounds are considered equivalent. The MPEP 2144.09 states “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
The following species in the reference on page 6 render the present claims obvious as homologues or homologues and positional isomers.
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Therefore, a person skilled in the art would make the homologue compounds as taught by Matsumura et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNA MOORE whose telephone number is (571)272-9046. The examiner can normally be reached Monday - Friday, 10:00 am to 7:00 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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/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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