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 .
Status of Claims
Claims 1-3, 6, 9-10, 16-17, 22-23, 27, 36-37, 44, and 48-53 are pending in the instant application.
Claims 4-5, 7-8, 11-15, 18-21, 24-26, 28-35, 38-43, and 45-47 have been canceled.
Election/Restriction
This action is in response to an election from a restriction requirement filed on December 31st, 2025. There are 19 claims pending and 3 claims under consideration. Claims 3, 6, 9-10, 16-17, 22-23, 27, 36, 44, 48-53 have been withdrawn as claims drawn to a non-elected invention. This is the first action on the merits. The present invention relates to a compound having the structure as recited at instant Claim 1.
Applicant’s election with traverse of Group I, claims 1-2, 17, 22-23, 27, 36-37, and 49-50 and species election of
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as a single species of compound of the structure as recited at instant Claim 1 in the reply filed February 27th, 2026 is acknowledged.
Applicant has traversed this rejection on the basis that
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, cited in the restriction requirement mailed December 31st, 2025, no longer falls within the scope of the amended Claim 1. The examiner does not find this persuasive.
The claims lack unity of invention because the core structure of the cited compound, shown above, reads on the core structure of the compound as recited in Claim 1. Therefore, the commonly required technical feature of the core structure of a compound as recited at Claim 1 is not new. The common structural feature of the compounds as recited at instant Claim 1 is not a patentable advance over the prior art.
The special technical feature is defined as meaning those technical features that define the contribution which each claimed invention, considered as a whole, makes over the prior art. The feature is, thus, not special if it is known. What is common here is the core structure of the compound as recited at Claim 1, which is known.
The requirements are still deemed proper and therefore made FINAL.
Domestic Benefit
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/149,505, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The provisional application ‘505 is drawn to a composition of the formula:
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Instant Claims 1-2 and 37 presently under examination, are drawn to a compound of the formula:
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This includes a myriad of compounds beyond those disclosed in the provisional application ‘505. Support for these compounds is not found.
Therefore, the elected Claims 1-2 and 37 do not receive the benefit of the filing date of Application No. 63/149,405, and will be evaluated with an effective filing date of February 15th, 2022.
The instant application is a national stage entry of the application PCT/US2022/016464, filed February 15th, 2022.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any of the errors of which Applicant may become aware of in the specification.
Drawings
The drawings are objected to because axes labels in Figures 7C and 7D are illegible and Figures 10A, 10C, and 10D are illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Information Disclosure Statement
The Information Disclosure Statements received August 14th, 2023, September 15th, 2023, and January 3rd 2024 have been fully considered by the examiner, except where marked with a strikethrough.
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 1-2 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.
Claim 1 is rendered indefinite due to the recitations of the limitations “R and R2 are in ortho position, meta position or para position,”, “when R and R2 are in meta position or para position”, and “when R and R2 are in ortho position”. A person having ordinary skill in the art readily understands ortho, meta, and para substitution to refer respectively to a 1,2-, 1,3-, and 1-4- substitution pattern on an aromatic ring. When referencing ortho, meta, and para position, a person having ordinary skill in the art refers to substituents on the aromatic ring itself. In the instant case, the R moiety is not a substituent of the aromatic ring. Therefore, the interpretation of ortho, meta, and para in the instant case is unclear.
Further, the limitation in Claim 1 that recites “X is C or N” renders the claim indefinite. When X is C, the result is a carbon having only three bonds. The examiner has construed the intention of this limitation as “X is CH or N”.
Appropriate clarification is required.
Claim 2 is rendered indefinite due to the recitation of the limitations “R and R2 are in meta position” and “R and R2 are in ortho position.” A person having ordinary skill in the art readily understands ortho and meta substitution to refer respectively to a 1,2- and 1,3- substitution pattern on an aromatic ring. When referencing ortho and meta position, a person having ordinary skill in the art refers to substituents on the aromatic ring itself. In the instant case, the R moiety is not a substituent of the aromatic ring. Therefore, the interpretation of ortho and meta in the instant case is unclear.
Further, the limitation in Claim 2 that recites “X is C or N” renders the claim indefinite. When X is C, the result is a carbon having only three bonds. The examiner has construed the intention of this limitation as “X is CH or N”.
Appropriate clarification is required.
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.
Claims 1-2 and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Turkman et. al. (“Novel late-stage radiosynthesis of 5-[18F]-trifluoromethyl-1,2,4-oxadiazole (TFMO) containing molecules for PET imaging”, Scientific Reports, published May 21st, 2021; hereinafter referred to as Turkman).
At Page 5, Turkman teaches the following as compound 10:
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This compound is the instantly elected species, as noted in the remarks filed February 27th, 2026.
For clarity of the record, this compound reads on a compound as recited at instant Claim 1 when the variables are defined as follows:
X is C.
R2 is H.
R3 is Br.
R is OH.
Regarding Claim 37, this compound is the first compound recited in the claim.
Claims 1 and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2648713-28-2 (entered into STN June 24th, 2021; obtained from the internet March 5th, 2026; hereinafter referred to as CAS Registry File).
CAS Registry File teaches a compound of the structure:
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This compound is the instantly elected species, as noted in the remarks filed February 27th, 2026.
For clarity of the record, this compound reads on a compound as recited at instant Claim 1 when the variables are defined as follows:
X is C.
R2 is H.
R3 is Br.
R is OH.
Regarding Claim 37, this compound is the first compound recited in the claim.
Conclusion
Claims 1-2 and 37 are rejected.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL JOHN BURKETT whose telephone number is (703)756-5390. The examiner can normally be reached Monday - Friday.
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 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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/D.J.B./Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624
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