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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/15/2026 has been entered.
Status of Claims
Claims 15 and 17-42 are pending in the instant application. Claims 21,26-27,32,34-36,38, and 40-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 15, 17-20,22-25,28-31,33,37, and 39 is contained herein.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 10/23/2025 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 1/15/2026.
Status of Rejections
35 USC § 112 (a)
The rejection of claim 17 is maintained.
Applicant’s amendments, see Remarks, filed 1/15/2026, with respect to the rejection set forth in the Final Office Action mailed 10/23/2025, have been fully considered but are not fully found persuasive.
To reiterate the crux of the rejection, the claims were rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method of treatment of diabetic macular edema and treatment or prevention of hereditary angioedema using the claimed compounds, does not reasonably provide enablement for treating the full scope of diseases claimed therein. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Applicants have provided additional references to support the scope of the amended claims which now recite the prevention and treatment of diseases selected from the group consisting of diabetic macular edema, age-related macular degeneration, choroidal neovascularization, hereditary angioedema and/or edema after stroke. However, the additional references appear to not provide enablement for preventing the aforementioned diseases in any prophylactic manner with the exception of hereditary angioedema as stated of record by the examiner. Thus the rejection is maintained with respect to this oversight.
The examiner recommends that the claims are amended to recite a treatment of diseases selected from the group consisting of diabetic macular edema, age-related macular degeneration, choroidal neovascularization, edema after stroke, and/or the treatment or prevention of hereditary angioedema to obviate the rejection.
New Rejections
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 15, 17-20,22-25,28, and 29 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 pre-AIA the applicant regards as the invention.
Claim 15 along with others contain various chemical structures with artifacts that appear to be a rectangle as shown below:
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222
726
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.These artifacts are not defined within the claims and thus the scope of their meaning is unclear. Thus the scope of the claim and claims dependent on it which do not rectify the issue are indefinite. Correction is required.
Claim Rejections - 35 USC § 112
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 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], 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.
Claim 17 is 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 17 does not limit claim 15 with respect to the language “method of preventing wet age-related macular degeneration” since claim 15 recites only the treatment of said disease.
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 15, 17-20,22-25,28, and 29 are rejected. Claims 31,33,37, and 39 are allowable. Claim 30 is objected to as being dependent upon a rejected or objected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey 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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/BRIAN E MCDOWELL/ Primary Examiner, Art Unit 1624
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