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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5, 8-11, 17-19 and 21 in the reply filed on 7/27/26 is acknowledged. Claims 22-26 and 28-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/27/26.
Elected species allowable
Applicant’s elected species is free of art. The following compound is allowable.
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Examiner selects the following species for further examination:
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The above species is within the scope of compound II and listed in claim 19 as compound AA2-128; 6ab. Claims 1, 2, 4, 8-11, 17-19 and 21 read on the elected species. Claims 3 and 5 do not read on the selected species and are withdrawn.
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, 2, 4, 8-11, 17-18 and 21 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.
Regarding claim 1, the phrase "for example" 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). There instances numerous instances in claim 1 where the phrase “for example” appears. Examiner suggests deleting the phrase and the limitations that follow the phrase. Claims 2, 4, 8-11, 17-18 and 21 depend from claim 1 and therefore carry with them the indefinite features of claim 1.
Claims 1, 2, 4, 8-11, 17-18 and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: Preamble to the claims recites A compound… of formula VII. The last compound recited is presumably the compound of formula VII, but the compound identifier, present in other recited compounds is missing. The compound identifier is an essential element of the claim.
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.
Claim(s) 1, 2, 4, 8-11, 17-19 and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Werbovetz et al (WO 2018/045106).
On page 10, art discloses compound 1m which anticipates the rejected claims:
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With regards to claim 21, directed to pharmaceutical composition, claim 85 of Werbovetz is directed to a pharmaceutical composition comprising compound 1m.
Conclusion
Claims 1-5, 8-11, 17-19, 21-26 and 28-29 are pending
Claims 1, 2, 4, 8-11, 17-19 and 21 are rejected
Claims 3, 5 and 22-26 and 28-29 are withdrawn
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YEVGENY VALENROD whose telephone number is (571)272-9049. The examiner can normally be reached Mon-Fri 9am-5pm.
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, Amy L Clark can be reached at 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YEVGENY VALENROD/Primary Examiner, Art Unit 1628
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