DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant’s election without traverse of Group IV, and species of compound 12, in the reply filed on July 23, 2026 is acknowledged.
3. Examination followed guidelines provided by MPEP 803.02. The elected species appeared to be novel and nonobvious over the prior art. Therefore, the search and examination was extended. Prior art was found that anticipates the Markush claims with respect to a nonelected species. The Markush claims were rejected and claims to nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species and the nonelected species shown below.
4. Claims 3, 4, 10, 12, 18, 21, 23, 24, 26, 27, 30, 32-35 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter. Election was made without traverse in the reply filed on July 23, 2026.
Priority
5. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
6. The information disclosure statements (dated July 23, 2026 and June 22, 2026 and November 3, 2023) were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The statements were considered. Signed copies of form 1449 are enclosed herewith.
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.
7. Claims 7, 19 and 31 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.
The claims refer to a definition wherein V2 is a group formed from J2. It is not possible to interpret the structural limitations of V2. Applicants have not defined what structures are formed, and how the structures are formed such that the metes and bound can be ascertained. Moreover, D is defined as a fragment of a bioactive molecule. This can be any atom which is a fragment of a bioactive molecule. For these reasons, a structural limitation for the compounds cannot be ascertained. The claims were searched without further limiting the structure by variables V2 and D, and allowing these variables to assume any structure. Appropriate correction is required.
8. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “V2 is a group formed from J2”, and the claim also recites embodiments of “preferably” and “further preferably” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Improper Markush Rejection
9. Claims 7, 8, 19 and 31 rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of Formula VI is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the core structure shares only two sulfonyl groups; the remained of the core structure is defined by variables which can assume any cyclic or non-cyclic structure.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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.
10. Claim(s) 7 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Katzenellenbogen et al. (caplus an 2015:559691). The reference has a date of 2015 which antedates the present claims having an effective filing date of 2022 and priority claim to foreign application dated 2021. The reference teaches, for example, the compound of
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which corresponds to the present claims in the following manner: B1=B2=bond; Y1=Y2=N; Y3=CH; Z2=W2=absent; L=the rest of the compound; E=bond; D=H, for example. See further claim interpretation above, Section 7.
Conclusion
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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