Some 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 .
Application and Claims Status
In the amendment as filed on 4/21/2026, applicants have amended claims 1, 18, 21, and 23-24; cancelled no claims; and added no new claims. Therefore, claims 1-3,5-8,10,15-21 and 23-24 are currently pending and claims 1-3,5-8,10,15-21 and 23-24 are presently under examination.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in China on 03/08/2021. It is noted, however, that applicant has not filed a certified copy of the 202110251924.9 application as required by 37 CFR 1.55.
Claim Objections
The objection to claims 1, 21 and 23-24 for not being written in the singular, alternative format is withdrawn based on the amendments.
The objection to claim 23 because of improperly reciting “comprising administering” is withdrawn based on the amendments.
Claim Rejections - 35 USC § 112(d)
The rejection of claim 18 under 35 U.S.C. 112(d) is withdrawn based on the amendments. Specifically, Applicant has removed the compound in question.
Claim Rejections - 35 USC § 102
The rejection of claims 1, 6-8, 16-17, and 21 under 35 U.S.C. 102(a)(1) as being anticipated by Booth is withdrawn based on amendments. Specifically, Applicant removed the term halogen from the definition of R5 to overcome the rejection.
New Objections/Rejections
Claim Objections
Claims 1-3, 5-8, 10, 15-19, and 24 are objected to because of the following informality: the last two groups defined for each variable should have an “or” or “and” between them, so as to be consistent with proper Markush practice. So, in the limitation of E of claim 1, for example, the word “or” or “and” should appear between “C3-C12 cycloalkyl,” and “R6 substituted C3-C12 cycloalkyl;”. Again, in the limitation of R5 in claim 1, as another example, the word “or” or “and” should appear between “C1-C3 alkyl substituted C3-C12 cycloalkyl,” and “halogen substituted C3-C12 cycloalkyl;”. This informality is repeated throughout all claim limitations of claim 1, and further repeated, generally, in claims 2, 5-8, 10, 15-19, and 24. Appropriate correction is required.
Claims 1, 2, 7, 10, and 15-17 are objected to because of the following informality: the word “and” should be between the last two variables defined, so as to be consistent with proper Markush practice. So, in claim 1, the word “and” should appear at the end of the limitation of B to bridge the limitations of B and R8. In claim 2, the word “and” should appear at the end of the limitation of R5 to bridge the limitations of R5 and R6. In claim 7, the word “and” should appear at the end of the limitation of Y to bridge the limitations of Y and Z. In claim 10, the word “and” should appear at the end of the limitation of B to bridge the limitations of B and R8. In claim 15, the word “and” should appear at the end of the limitation of A to bridge the limitations of A and B. In claim 16, the word “and” should appear at the end of the limitation of B to bridge the limitations of B and R8. In claim 17, the word “and” should appear at the end of the limitation of B to bridge the limitations of B and R8. Appropriate correction is required.
Claim 19 is objected to for the following informality: there should be a comma separating all structures recited in the claim. Appropriate correction is required.
Claims 1, 3, 5, 6, 10, 15, 18 are objected to because of the following informalities: the structures of said claims must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black, sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. In each of the recited claims, there are structures of non-uniform thickness that are not sufficiently dense and dark. For instance, in claim 1, L is recited as:
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.
As another example, in claim 3, E is recited as:
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and
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and
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Appropriate correction is required.
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.
Claims 1-3, 5-8, 10, 15-18, 20-21, and 23-24 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.
Claims 1, 6, 7, 10, and 15-17 are rejected as vague and indefinite for its recitation, in various limitations of the cited claims, Applicant recites that some limitation (e.g. L, Y, Z, B) ”…is absent” throughout. If said variable is “absent”, then there would not be a variable at that position. Examiner recommends amending the claim to read, “[L, Y, Z, etc…] is a bond” if that is what Applicant intends. Claims 2-3, 5, 8, 18, 20-21, and 23-24 require and/or do not clarify the limitation at issue and are similarly rejected.
Claims 1 and 10 are rejected as vague and ambiguous for recitation of the term “heterocycloalkyl ketone group”. As currently written, this could be C(O)-heterocycloalkyl (see definition of B in claim 1), which, based on the recited species in dependent claims, is likely not what the Applicant intends. Other variables are often recited as, for example, “R8 substituted 3-12 membered heterocycloalkyl” with the substituent listed in front of the group, so to be consistent with this formatting, Applicant could recite “ketone substituted heterocycloalkyl”.
Claims 15 and 18 are rejected to as vague for the recitation of species in limitation A that have multiple substitutions (representative examples below). The claim language of independent claim 1 does not recite that multiple substitutions are allowed, and the specification (page 15) does not say that multiple substitutions are inherently allowed. Therefore, the claims are ambiguous since claim 1 reads as a single substitution.
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Claim 21 is rejected as indefinite for the phrase “being prepared from” since this may convert any of the compounds in claim 1 to something else. Therefore, the metes and bounds are not known.
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 3 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.
Claim 3 broadens the scope of claim 1, from which it depends. Claim 3 recites the following compounds:
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Claim 1 recites that E is selected from “R6 substituted C3-C12 cycloalkyl” where R6 is “halogen substituted C1-C6 alkyl” but does not recite that E can be selected from R6 substituted 3-12 membered heterocycloalkyl. Thus, the above compounds are outside the scope of claim 1.
Claim 15 broadens the scope of claim 1, from which it depends. In claim 15, in the limitation of B, Applicant recites multiple structures (page 11, bottom; page 12, bottom; page 13, top) of the following form, as examples, where:
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Claim 1 recites that B is selected from, notably, “R8 substituted C3-C12 cycloalkyl”, “R8 substituted 3-12 membered heterocycloalkyl”, “C3-C12 cycloalkyl substituted amine group”, and “3-12 membered heterocycloalkyl substituted amine group”, where R8 can be “amino”. Examiner is unaware how these limitations in B allow for the species recited in limitation B. First, the specification does not provide any definitions for the terms “C3-C12 cycloalkyl substituted amine group”, and “3-12 membered heterocycloalkyl substituted amine group”. A POSITA would understand that “substituted” connotes any group that replaces a hydrogen off the parent group, and that the substituent is not a linking substituent (e.g. the point of attachment to the rest of the structure, as in the examples provided above). So, for instance, “C3-C12 cycloalkyl substituted amine group” and “3-12 membered heterocycloalkyl substituted amine group” would be represented by the following, where the substituted amino group does not play a role in linking to the rest of the claimed Markush structure:
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Thus, claim 15 broadens the scope of claim 1.
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.
Conclusion
Claims 1-3, 5-8, 10, 15-18, 20-21, and 23-24 are rejected.
Claim 19 is objected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUKE ALAN BORALSKY whose telephone number is (571)272-9746. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H Murray can be reached at 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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/L.A.B./Examiner, Art Unit 1624
/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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