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 1-9 and 14-24 are pending in this application.
Election/Restrictions
Applicant’s election with traverse of Group I and a single disclosed species of Example 21 in the reply filed on 06/09/2026 is acknowledged.
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The traversal is on the ground(s) that “the election between Groups I, II and III is improper……rigid rules cannot be given and each case should be considered on its merit, the benefit of any doubt being given to the applicant”. Applicants also argue that the search for Groups I-III would not impose a serious burden to the Examiner. The examiner disagrees with applicant’s argument. As set forth in the Restriction Requirement, the special technical feature of Groups I-II and III lack unity of invention because the groups do not share the same or corresponding technical feature. The special technical feature of Group III involves a therapeutic process that is not present in the special technical feature of Group I-II. The special technical feature of Group I is the rings that are formed when L = CH2; D1-D4 = C; Cy1 = phenyl, pyrimidine, pyrazole; Cy2 = imidazole or pyrazole; and A1, A2, B1-B5 are bicyclic rings as set forth in Group I. and id different from Group II. Note that Group I is what applicants disclosed in their specification. Furthermore, examination of each of the additional groups would require search of chemical structure in commercially available Chemical Abstract Database and EAST database of subclasses unnecessary for the examination of the elected claims. Therefore, examination of each of these additional inventions would require a serious additional burden of search.
The requirement is still deemed proper and is therefore made FINAL.
The claims are drawn to multiple inventions for reasons set forth in the restriction requirement. The claims are examined only to the extent that they read on the elected invention. Cancellation of the non-elected subject matter is recommended in response to this Office Action. Applicants have to amend the claims according to the elected invention of Group I shown below.
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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 1-9 and 14-19 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. Claim 1 and claims dependent thereon are rejected because the phrase
“optionally substituted” is indefinite. In the absence of the specific moieties intended to effectuate modification by the “substitution” or attachment to the chemical core claimed, the term “substituted” renders the claims in which it appears indefinite in all occurrences wherein applicants fails to articulate by chemical name, structural formula or sufficiently distinct functional language, the particular moieties applicants regards as those which will facilitate substitution, requisite to identifying the composition of matter claimed.
b. Claim 1 and claims dependent thereof are rejected because the phrase “isotope-substituted derivatives” is indefinite. What is covered by “isotope-substituted derivatives” and what is not? How is this different from isotopes thereof? 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 isotope-substituted derivatives or delete said phrase.
Information Disclosure Statement
6. Applicant’s Information Disclosure Statement, filed on06/09/2026 and 07/10/2024 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith.
To expedite prosecution after rejoinder of Group III, the examiner recommends that applicants delete “preventing” from claim 20 and also recite specific USP1 regulation related diseases as it was done in claims 21-22 and 24.
Conclusion
7. 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 17, 2026
Prosecution Insights