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 . Claims 1-4 and 7-14 are pending in this application.
Election/Restrictions
Applicant’s election with traverse of Group I in the reply filed on 04/13/2026 is acknowledged. Applicants argue that Groups I and II are directed to the same general inventive concept. Applicants indicate that the Groups of claims are inexorably linked and no addition search burden would present during examination. The examiner disagrees with applicant’s argument. As set forth in the Restriction Requirement, the special technical feature of Group II involves a therapeutic technique that is not present in the special technical feature of Group I. As indicated in the Restriction Requirement, the method of use (Group II) would be rejoined once the product (Group I) is found allowable.
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 4 and 7-12 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:
a. Claim 4 is rejected because there is no period at the end of the clam. Is the compound Formula 1-26 the last species? If so, applicants have to insert a period at the end of said species. Note that this problem was indicated by the examiner at the end of the Restriction Requirement.
b. In claim 7, the phrase, “for preventing or treating cancers ....” is indefinite. Literally, it simply states an intention, which is a mental state, not a patentable limitation. Hence the claim is improperly dependent, as it does not further limit the claim on which it depends. That is how the claim has been examined. Alternatively, this may be intended as a method of use claim, in which case, the claim would be garbled, as it begins as a pharmaceutical composition claim, and ends as a method claim. Moreover, as it does not contain any actual step, it would not be a proper process claim. Likewise, claims 10-12 are rejected because they depend from claim 7 and further recite an intended use for the treatment and prevention of specific cancers, specific leukemia and specific inflammatory diseases. To overcome this rejection, the examiner recommends that applicants delete the intended use in claim 7 and also delete claims 10-12 that duplicate claim 7. Note that this problem was indicated by the examiner at the end of the Restriction Requirement.
Information Disclosure Statement
5. Applicant’s Information Disclosure Statement, filed on 01/04/2024 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith.
Allowable Subject Matter
6. Claims 1-3 are allowed.
In regard to the method claims 13-14, the examiner will allow claim 13 if applicants delete “preventing” and incorporate the specific diseases in claim 14 into claim 13.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
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 on 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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/Kahsay Habte/
Primary Examiner, Art Unit 1624
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