DETAILED ACTION
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 .
Current Status of 18/692,053
This Office Action is responsive to the amended claims and Applicant remarks of 06/22/2026. Claims 1-25 and 31-41 are pending and have been examined on the merits.
Priority
The instant application is a national stage entry of PCT/CN2022/118631, filed 09/14/2022, which claims priority to PCT/CN2021/118770, filed 09/16/2021.
Response to Arguments
Applicants have cancelled claim 30, rendering the previous rejection of the claim under 35 U.S.C. §112(a) moot. This rejection is withdrawn. Applicants have also amended claims 2-13, 16, 19, and 20, removing the phrases “preferably”, “more preferably”, and “still more preferably.” This amendment renders the previous rejection under 35 U.S.C. §112(b) moot and the rejection is withdrawn. Similarly, Applicants have amended claims 4, 7, 8, 10, and 11 to remove the phrase “for example” from the claims. These amendments render the previous rejections under 35 U.S.C. §112(b) moot and the rejection is withdrawn.
Improper Markush Group
Claim 1 is 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 a compound of general 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 claimed genus of compounds defined by general formula (I) is disclosed as comprising small molecule RIP1 kinase inhibitors (pg. 18, lines 22-23). However, the claimed genus lacks a single structural similarity due to the alternatives for examined variables X, Q, W, A, Ar2, and Ar3. In particular, the allowed substitutions of X, Q, and W in the central bicyclic core allows for nine distinct combinations that vary the identity and bonding of atoms forming the bicyclic nucleus. Accordingly, the central bicyclic core does not constitute a single substantial structural feature common to all members of the claimed genus. This structural diversity is further expanded by the permitted selection for A, Ar2, and Ar3, each of which encompasses multiple distinct ring classes. Even without considering the additional structural variability associated with A, Ar2, and Ar3, the claimed alternatives fail to define a sufficiently common structural feature that can be associated with the disclosed RIP1 kinase inhibitory activity across the full scope of the genus.
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.
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 and 6 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.
Claim 1 recites “Ring Ar2 is C6-Cnarylene.” The variable “n” is not defined by the claim and therefore fails to establish the upper boundary of the number of carbon atoms permitted for the recited arylene group. Accordingly, the metes and bounds of the claimed ring Ar2 cannot be determined with reasonable certainty, rendering the claim indefinite.
Regarding claim 6, the phrase "preferably C4-C7 cycloalkylene" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Conclusion
Claims 1 and 6 are rejected.
Claims 2-5, 7-23, 25, and 31-41 are objected to for being dependent upon a rejected base claim.
Claim 24 is allowed for the reasons discussed in the Non-Final Rejection of 04/09/2026.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONNOR KENNEDY ENGLISH whose telephone number is (571)270-0813. The examiner can normally be reached Monday Friday, 8 a.m. 5 p.m. ET..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at (571)272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.K.E./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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