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 with traverse of Group I, and species of example 3, in the reply filed on April 9, 2026 is acknowledged. The traversal is on the ground(s) that there is not undue burden, and that the groups are related to a general inventive concept. Applicants state that the claimed products are different from the compounds disclosed in the reference citations due to the special technical feature of
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. These arguments are not found persuasive because the present application is a national stage entry application for which the consideration of burden does not apply. Further, the groups are not related by a general inventive concept as stated in the restriction requirement and additionally evidenced by the prior art rejection set forth in this office action.
The requirement is still deemed proper and is therefore made FINAL.
3. Examination followed guidelines provided by MPEP 803.02. The elected species was found to be novel and nonobvious over the prior art. Therefore, the search and examination was extended. Prior art was found that anticipates a nonelected species in the Markush claims. Thus, the claims were rejected and claims to nonelected species were withdrawn from further consideration.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 Claims 37 and 38 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter. Applicant timely traversed the restriction (election) requirement in the reply filed on April 9, 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 November 18, 2024 and August 5, 2025 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 1-3, 5, 10-12, 14, 22, 24, 25, 27, 29-31, 34 and 35 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 contain two definitions for ring A:
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. Moreover, the first definition recites variables T and Rx which are not defined. For the purpose of examination, the second interpretation was used wherein ring A is selected from
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. Appropriate correction is required.
8. Claims 1-3, 5, 10-12, 14, 22, 24, 25, 27, 29-32, 34 and 35 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 I 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 compounds do not share a core structure because all structural features are defined in terms of variables. If the interpretation is taken that ring A is one of
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, the compounds still do not share a common core since Link and D and Z are defined in terms of variables.
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.
9. 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 30 recites the broad recitation
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,
and the claim also recites
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...
which is the narrower statement of the range/limitation. The claim contains multiple occurrences of these types of recitations. In the present instance, claim 31 recites the broad recitation
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,
and the claim also recites
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...
which is the narrower statement of the range/limitation. The claim contains multiple occurrences of these types of recitations. 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.
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) 1-3, 5, 22, 24, 25, 30, 31, 34 and 35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 2759725-81-8 (
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). The reference has a date of February 18, 2022 which antedates the present claims having an effective filing date of July 28, 2022 and priority claim to foreign applications with an earliest date of July 29, 2021. Certified translations of the foreign documents have not been provided to show support for the presently claimed genus.
The compound corresponds to the present claims in the following manner: A=1st option, D=6 membered heterocyclyl substituted with R7=alkyl; Z=H; R3=R4=H; Y2=NH; R1 and R2 form oxo; Y1=bond=Y3; m=n=0. The compound inherently anticipates claim 35 because the properties are inseparable from the structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN JAE YOO whose telephone number is (571)272-9074. The examiner can normally be reached Mon-Fri 8-5.
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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