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 1-20 are pending in this application.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-2 and 14-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Godard et al. Journal of Heterocyclic Chemistry (1984), 21(1), 27-32. Cited reference teaches the following prior art compound that is the same as applicants when applicants compound of formula I has the following substituents: R1 = R2 = R3 = Hydrogen.
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Since said prior art compound is the same as applicants a 102(a)(1) rejection is proper.
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 1-20 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. In claim 1 or elsewhere in the claims, the phrase “R1, R2 and R3…comprise” is an open-ended language. What is covered and what is not? The examiner recommends that applicants recite specific substituents for variable R1, R2, and R3 e.g. R1, R2, and R3 are selected from H, alkyl…and heterocyclic group”. The examiner also recommends that applicants remove the quotations (“R1”, “R2”, and “R3”) from the variables so that they read as R1, R2, and R3.
b. Claim 1 and claims dependent thereof are rejected because the term “derivatives” is indefinite. What is covered and what is not? Note that a derivative is a compound that is derived from a similar compound by a chemical reaction or a compound that is imagined to arise from another compound. The examiner recommends that applicants recite the derivatives or delete said term.
c. In claim 2, the phrase “R1 comprises at least one of the following: Halogen, Nitro group, Aldehyde group, Sulfhydryl group, Carboxyl group, Cyano group, Amino group and Sulfonyl group” lacks sufficient antecedent basis. Claim 2 depends from claim 1, but there is no mention for said phrase in claim 1.
d. In claims 2-13, the phrase “for the modulation of caspase activity” or “for the modulation and diagnosis of caspase activity” has two problems. First, the phrase “for the modulation of caspase activity” or “for the modulation and diagnosis of caspase activity” lacks sufficient antecedent basis since said phrase is deleted in independent claim 1. Second, said phrase is an intended use and has no patentable weight. It is recommended that applicants delete said phrase from the claims as it was done in claim 1.
e. In claim 19, the phrase “for the treatment of diseases characterized by cell death or inflammation in acute and/or chronic conditions” 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 compound claim, and ends as a method claim. Moreover, as it does not contain any actual step, it would not be a proper process claim. Alternatively, applicants may have intended the compound “in the form in which it is used”, i.e. what is intended is a composition claim. That, however, would require a second ingredient (the carrier) to become a proper composition claim. The intended scope of the claim is thus unclear.
The same issue appears in claims 15 and 20 that recites “for the diagnosis and treatment of diseases that involve dysregulation of caspase activity” or “for the diagnosis and treatment of pathological conditions that involve….diseases that involve body cell individually”.
f. In claim 19, the phrase “claims 1” is a typographical error. It should read as claim 1.
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 pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 14-18 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. In claims 14-18, applicant’s recitation “with differential inhibitory activity against specific caspase enzymes, for the diagnosis and treatment of diseases that involve dysregulation of caspase activity, etc.” fails to narrow down the claim limitation of claim 1. 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.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
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 of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
Applicants have to insert the chemical structure formula I into the abstract. Applicants don’t have to define the variables.
Conclusion
10. 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Kahsay Habte/
Primary Examiner, Art Unit 1624
June 10, 2026
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