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
Claims 1, 3, 4, 7-16, 20-22 and 27-30 are pending in the application. Claims 1, 3, 10-12, 14-16 and 20-22 are rejected. Claims 1, 3, 14 and 21 are objected to. Claims 4, 7-9, 13 and 27-30 are withdrawn.
Restriction/Election of Species
Applicant’s election without traverse of Group I, claims 1, 3, 4, 7-16 and 20-22, and further elected species of “Compound 46” (having the chemical structure shown below) in the reply filed on March 2, 2026 is acknowledged.
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As per MPEP § 803.02(III), the examiner will determine whether the entire scope of the claims is patentable. Applicant’s elected species appears to be free of the prior art. Therefore, according to MPEP § 803.02(III): should the elected species be found allowable over the prior art, the examination of the Markush claim will be extended. The prior art search will be extended to cover non-elected species or group of species that fall within the scope of a proper Markush grouping which includes the elected species. The prior art search will not be extended unnecessarily to cover all nonelected species, and need not be extended beyond a proper Markush grouping. However, if prior art is found that anticipates or renders obvious the Markush claims with respect to a nonelected species, the Markush claims shall be rejected and claims to the nonelected species held withdrawn from further consideration. Consequently, the prior art search was extended to include the following non-elected species:
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Applicant asserts that “claims 1, 3, 4, 10-16 and 20-22 are encompassed by the elected species.” See page 3 of Applicant’s Remarks dated March 2, 2026. However, only claims 1, 3, 10-12, 14-16 and 20-22 read on Applicant’s elected species. Therefore, claims 4, 7-9, 13 and 27-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 2, 2026.
Priority
This application is a 35 U.S.C. § 371 National Stage Filing of International Application No. PCT/US2022/024966, filed on April 15, 2022, which claims benefit of Provisional Application No. 63/175,444, filed on April 15, 2021.
Information Disclosure Statement
The Information Disclosure Statement(s) (IDS) filed on October 12, 2023 and March 3, 2026 are in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the Examiner has considered the IDS documents and signed copies of the 1449 forms are attached.
Claim Objections
Claim 1, 3, 14 and 21 are objected to because of the following informalities:
Claim 1 should be amended to replace the expression “reset of the molecule” with -rest of the compound of formula (I)- for sake of clarity and consistency. See last two lines of claim.
Claims 1, 3 and 14 should be amended to be consistent with the usage of a hyphen for the variable alternatives recited in each claim.
Claim 21 should be amended to replace the word “elected” with the word -selected- for sake of clarity.
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, 10-12, 14-16 and 20-22 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 recites “-(CRcRd)p-aryl” as an alternative for variable “R3” and is rejected as indefinite because variables “Rc” and “Rd” are not defined in the claim. It appears Applicant intended the claim to recite “-(CRcRd)p-aryl”; therefore, appropriate corrections should be made. Dependent claim 20 does not correct this issue of indefiniteness and is likewise rejected.
Claims 1 and 3 recite “-NH4, -N(alkyl)4, [and] -N(aryl)4” as alternatives for variable “R1” and are rejected as indefinite. In view of these recited alternatives, it is unclear what type of bond (e.g., covalent, ionic, etc.) Applicant intended the “R1O” bond present in the compound of formula (I) to be. For example, due to the presence of a hyphen before the nitrogen atom in the aforementioned alternatives, it appears Applicant intended the “R1O” bond to be covalent. However, this would result in a structure comprising a nitrogen atom with five covalent bonds, which seems unlikely. On the other hand, if Applicant inadvertently included the hyphen and also omitted including the appropriate charge (e.g., -NH4+) for each of the aforementioned alternatives, then the “R1O” bond would be considered ionic. For example, on page 49 of the instant specification, Applicant discloses such an embodiment (shown below) of a compound of formula (I) wherein the “R1O” bond is ionic.
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To overcome the ambiguity regarding the “R1O” bond of a compound of formula (I), Applicant may, for instance, cancel the aforementioned alternatives from both claims 1 and 3. Dependent claims 10-12, 14-16 and 20-22 do not correct this issue of indefiniteness and are likewise rejected.
Claim 21 is rejected because it refers to “Tables 1 and 2” of the instant specification. A claim should particularly point out and distinctly claim the subject matter which the applicant regards as his invention and, under modern claim practice, stand alone to define the invention. MPEP 2173.05(s) states “Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.” Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993)” It is suggested Applicant amend claim 21 to recite nomenclature(s) and/or structure(s) with respect to the compounds disclosed in “Tables 1 and 2.”
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.
Claims 1, 3, 14-16, 20 and 22 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by PCT Publication No. WO 2007/071453 A1.
The prior art teaches “Diethyl 3-(N-hydroxyacetamido)-1-(3,4-dichlorophenyl)propylphosphonate” which corresponds to the following chemical structure (see e.g., page 45):
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Regarding instant claims 1, 3, 14-16, and 20 the above prior art structure is encompassed by the instantly claimed compound of formula (I), wherein ---- is absent; each R1 is C2 alkyl (i.e., ethyl); R2 is H; and R3 is C1 alkyl (i.e., methyl).
Regarding instant claim 22, the prior art teaches pharmaceutical compositions comprising, for instance, the above prior art compound and one or more pharmaceutically acceptable carriers. See e.g., pages 5 and 18.
Conclusion
No claims are allowed.
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/D.M.S./Examiner, Art Unit 1626
/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626
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