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 elected species:
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in the reply filed on 5/27/2026 is acknowledged. The traversal is on the ground(s) that there is unity of invention due to the core structure of Formula I. However this is not found persuasive because the compounds must be viewed as a whole and with the varying combinations of ring systems formed by A and B, each individual heterocycle would not function in the same manner to give the same intended result. Therefore, these claims can be said to lack unity a priori as there is no technical feature common to all the claims. In regard to the species requirement, the species contain various heterocyclic and/or carbocyclic ring systems that possess different chemical properties and are expected to react differently when substituted independently into the compound group described above. In addition, these species are not obvious variants of each other based on the current record.
There is an examination and search burden for these patentably distinct species due to their mutually exclusive characteristics. The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6, 7, and 11-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 1-5 and 8-10 is contained herein. Applicant’s elected species was found free from the art and the search extended to cover formula I.
Priority
This application claims the priority to Canadian Patent Application No. 3,124,916,
filed on 14 July 2021. Benefit for the foreign application is not accorded since subject matter disclosed within the instant application is not supported (e.g. full scope of formula I with respect to rings formed with variables A, A’,B,B’ along with other R variables). The claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In re Ziegler, 992 F.2d 1197, 1200, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993); Kawaiv.Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record.
Specification
Applicant is reminded of the proper content of an Abstract of the Disclosure, see MPEP 608.01(b).
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., "The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics." Exemplification of a species could be illustrative of members of the class. For processes, the type reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b). A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.
Claim Objections
Claims 1-5 and 8-10 are objected to for the following:
In claim 1, “Formula I.” should simply read “Formula I” since claims should only end with a period. Thus the claim and claims dependent on it are objected to. Additionally claim 8 should have a period at the end of the claim.
In claim 2 the language “R11 to R20” should more appropriately read “R11, R12, R13..etc.”. Correction is required.
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, 5, and 8-10 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 pre-AIA the applicant regards as the invention.
Regarding phrases "such as", “optionally a branched…(see claim 4)”, “preferably”, etc. renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Correction is required.
In claim 8, the scope of variables R7-20 are not defined. Claims 9-10 also recite variables such as R7, R8, R9, R10 which are not embraced by the chemical formula II and are indefinite. The examiner will assume that Applicants intend “R7-10” in terms of interpretation and prior art until the issue is addressed.
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 2 and 9-10 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 embrace limitations wherein variables R7-20 may be other than hydrogen and selected from other substituents (e.g. halo, alkyl, etc.). However claim 1 states that the groups formed by combining variables A, A’, and B, B’ are not further substituted.
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 2, 4, 5, and 8-10 are rejected. Claims 1 and 3 are objected to. The claims are objected to and rejected to for the reasons of record but there appears to be no significantly close prior art to put on record as well.
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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