DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s election without traverse of Group I, and species of compound 89, in the reply filed on May 2, 2026 is acknowledged.
3. Examination followed guidelines provided by MPEP 803.02. The elected species appeared to be novel and nonobvious over the prior art. Therefore, the search and examination was extended. Prior art was found that anticipates the claims with respect to a nonelected species. Thus, the Markush claims were rejected and claims to nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species, the nonelected species shown below, and additionally to the full scope of claims 3 and 15.
4. Claims 10-12, 17 and 18 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter. Election was made without traverse in the reply filed on May 2, 2026.
Priority
5. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
6. The information disclosure statements (dated May 13, 2024 and September 7, 2025) were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The statements were considered. Signed copies of form 1449 are enclosed herewith.
Claim Objections
7. Claims 3 and 15 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
8. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2, 4-7, 9, 13 and 14 recite the broad recitation “L is -CH2- or -O-“, and the claim also recites “preferably -O- “which is the narrower statement of the range/limitation. These types of recitations including the term “preferably” have multiple occurrences in the claims. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
9. Claim(s) 1, 6-9 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 213747-32-1 (
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200
596
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). The reference has a date of November 5, 1998 which antedate the present claims having an effective filing date of December 14, 2022 and priority claim to foreign applications dated December 21, 2021 and later. The compound corresponds to the present claims in the following manner: m=1; R3=OMe; L=S; R1=R2=H; X=bond; G=heterocycle.
10. Claim(s) 1, 2, 6-9 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 1227830-04-7 (
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334
626
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). The reference has a date of November 5, 1998 which antedate the present claims having an effective filing date of December 14, 2022 and priority claim to foreign applications dated December 21, 2021 and later. The compound corresponds to the present claims in the following manner: L=O; R1=CF3; R2=OMe; R3=H; X=C(O)N; G=methyl piperidine.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN JAE YOO whose telephone number is (571)272-9074. The examiner can normally be reached Mon-Fri 8-5.
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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