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
RESPONSE TO ELECTION/RESTRICTION
Applicant's election with traverse of group I, drawn to compounds of the formula I’’ and simple compositions thereof and elected species:
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in the reply filed on 4/20/2026 is acknowledged The examiner notes that claims 1, 2, and 4-10 read on the elected species with respect to the elected invention. The traversal is on the ground(s) that groups I-II have an overlap in scope and should not be a search burden for the examiner. This is not found persuasive because the groups were found to be distinct or independent in the previous office action. The examiner would like to draw applicant's attention to the following:
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) Separate classification: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search.;
(b) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors.
(c) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s).
In reference to section (a), the inventions as claimed are not recognized as art
equivalents due to their different classification (compounds may be classified in
C07D+ and methods in A61K+). Thus, separate fields of search
are required by the examiner.
Thus this situation appropriately satisfies criteria (a) above. The examiner would encounter a serious search burden if a restriction requirement was not implemented. Applicant’s traversal of the elected species is found moot since there was no reason stated of record why the requirement was deemed improper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3 and 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 1, 2, and 4-10 is contained herein. Applicant’s elected species was found free of the art and the search expanded to cover formula I’’.
Priority
The present application is a Continuation-in-part Application of US Application No. 18/306,236, filed on April 25, 2023, which claims priorities of the Chinese Patent Application No. CN202110413867X,filed on April 16, 2021, the Chinese Patent Application No. CN2021105177436, filed on May 12, 2021, the Chinese Patent Application No. CN2021106375805, filed on June 8, 2021, the Chinese Patent Application No. CN2021106592421, filed on June 11, 2021, the Chinese Patent Application No. CN2021108795702,filed on July 30, 2021, the Chinese Patent Application No. CN2021110408784, filed on September 6, 2021,the Chinese Patent Application No. CN2021110888122, filed on September 16, 2021, the Chinese Patent
Application No. CN2021113070430, filed on November 5, 2021, the Chinese Patent Application No.CN2021113430120, filed on November 12, 2021, the Chinese Patent Application No. CN2021114339622,filed on November 29, 2021, the Chinese Patent Application No. CN2021115671634, filed on December 20,2021, the Chinese Patent Application No. CN2022100298871, filed on January 12, 2022 and the Chinese
Patent Application No. CN2022101700462, filed on February 23, 2022.
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record.
Claim Objections
Claims 1, 2, and 4-10 are objected to because of the following informalities:
In claim 1, the text “3- to 8-membered" should more appropriately read "3- to 8-membered" (see spacing difference). Thus the claim and claims dependent on it are objected to.
Claims 7-8 should incorporate language in the preamble such as “wherein the compound is selected from the group consisting of..” for proper Markush language. Correction is required. Additionally claim 8 should have a period at the end of the claim.
Claims should only begin with a capital letter and end with a period. See MPEP 608.01(m).
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.
Claims 4, 5, and 7 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. The aforementioned claims do not further limit claim 1 with respect to the heteroatoms in the variable B heterocycles being selected from “SO2” since claim 1 does not set forth this limitation.
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 4, 5, and 7 are rejected. Claims 1, 2, 6, and 8-10 are objected to. The claims are objected and rejected to for the reasons of record. However the compounds appear to be novel and nonobvious over the art with respect to ring systems bearing A’ and B.
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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