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 without traverse of group I, drawn to compounds of the formula I and simple compositions thereof and elected species:
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in the reply filed on 8/11/2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2, 3, 5, 7, 9, 10, and 12-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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, 4, 6, 8, and 11 is contained herein. Applicants elected species was found free of the art and the search extended to cover species wherein the 5-membered ring is substituted with
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and wherein the variables embraced within the latter are selected from H or alkyl.
Priority
This application is a continuation of International Patent Application No. PCT/US2022/048867, filed in the U.S. Receiving Office on November 3, 2022, which claims the benefit of U.S. Provisional Application 63/275,324 filed on November 3, 2021.
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record. References which do not contain a publication year have not been considered.
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.
It is recommended that the structure of Formula I be inserted into the abstract to accurately illustrate the claimed invention.
Claim Objections
Claims 6 and 11 are objected to because of the following informalities:
In the preamble of these claims, the language “selected from the group consisting of..” or similar language should be incorporated. Additionally, there should be commas between each listed species in claim 11.
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.
Claims 1, 6, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated over PUBCHEM, SID 135009859, March 21, 2012-mentioned in IDS.
PUBCHEM teaches the following compound:
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wherein R1,2,5,6,7,8 is selected from H or alkyl and R3 selected from
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wherein RA1 = H and RN1,N3 = alkyl. Thus the claims are anticipated.
Conclusion
Claims 1, 6, and 8 are rejected. Claims 4 and 11 are objected to. Note that the full scope of the claims (including that of claim 4) due to the election of species requirement and art found of record has not been searched. See MPEP 803.02, “If the examiner determines that the elected species is allowable over the prior art, the examination of the Markush claim will be extended. If prior art is then found that anticipates or renders obvious the Markush claim with respect to a nonelected species, the Markush claim shall be rejected; claims to the nonelected species would still be held withdrawn from further consideration. The prior art search will not be extended unnecessarily to cover all nonelected species, and need not be extended beyond a proper Markush grouping.”
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.
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 http://pair-direct.uspto.gov. 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.
/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
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