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
Claims 1-2, 7, 9-11, 13, 17-20, 22, 24-26 and 30-33 are pending in the present application file.
Election/Restrictions
Applicant’s election of Group I (claims 1-2, 7, 9-11, 13, 17-20, 22, and 24-26; directed to compound of formula (I), or composition thereof) and a species of instant formula (I) without traverse in the reply filed July 27, 2026 is acknowledged.
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As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species of instant formula (I) appears free of the prior art. Therefore, according to MPEP 803.02: should the elected species be found allowable, the examination of the Markush-type claim will be extended. If the examination is extended and a non-elected species found not allowable, the Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration.
The examination of the Markush-type claims has been extended to include the species cited below under 35 U.S.C. 102, which is not allowable, the species of claim 25, which are 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, as well as the species of instant claim 26, which are allowable.
As a non-elected species has been found not allowable, the Markush-type claims have been rejected and claims to the nonelected invention held withdrawn from further consideration. Claims 1-2, 7, 13, 17, 19-20, 22, and 24-26 have been examined to the extent that they embrace and are readable on the elected embodiment and the above identified nonelected species. Since the nonelected species has been found not allowable, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Claims 9-11, 18 and 30-33 do not read on the presently searched and examined subject matter. Therefore, claims 9-11, 18 and 30-33 are withdrawn from consideration by the Examiner under 37 CFR 1.142(b) as being drawn to a non-elected invention.
Priority
The following continuity data is acknowledged in the present application file:
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Information Disclosure Statement
The Information Disclosure Statement(s) filed December 20, 2024 have been acknowledged by the Examiner. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the Examiner.
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 13 and 19-20 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 13 recites the limitation "R28" in line 6 (see option (d)). There is insufficient antecedent basis for this limitation in the claim. Parent claim 1, from which instant claim 13 depends upon, does not recite the variable R28 in the definition of a compound of instant formula (I).
Applicant may amend claim 13 to remove option (d) from the list of alternatives or to depend upon claim 7, which does recite R28, to overcome this aspect of the rejection.
Claims 19-20 recite the limitation "The compound of claim 0" in line . There is insufficient antecedent basis for this limitation in the claim as claim 0 is not present in the instant claim set. For the purposes of examination, in the interest of compact prosecution, instant claims 19-20 are interpreted as depending from instant claim 1.
Applicant may amend claims 19 and 20 to depend from the claim 1, to overcome this aspect of the rejection.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 7, 13, 17, 19-20, 22, and 25 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by WO 2021/067606 A1 (Crew et al.; Publication Date: April 8, 2021, International Filing Date: October 1, 2020).
The prior art teaches the following compound as compound 717 on page 717:
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This compound is embraced by the instant variables of formula (I) where:
L is –(AL)q-
q is 3
Each AL is independently C6 heterocycle or CRL1RL2
RL1 and RL2 are each hydrogen
ULM is
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W3 is
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R9 is hydrogen
R10 is alkyl
R11 is
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P is 0
R14a is alkyl
R14b is H (see instant claim 13)
W5 is phenyl
O is 0
R15 is optionally substituted heteroaryl, and
PTM is
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(see instant claim 2)
Regarding claim 7, ULM also corresponds to
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where
R1 is alkyl
R3 is 5 membered heteroaryl (isoxazole; see instant claim 17)
W5 is phenyl
R14a is alkyl
R14b is H
R15 is
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R18 is alkyl
o is 0
Regarding claim 19, the ULM of the prior art compound corresponds to
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wherein,
R30 is H
R1 is C3 alkyl
R14a is alkyl
R14b is H
R15 is
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R28 is C1 alkyl
Regarding claim 20, the ULM of the prior art compound is embraced by the second alternative listed on page 2 of claim 20.
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Regarding claim 22, the L of the prior art compound also corresponds to
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where
u is 0
n is 1
w is 0
o is 0
v is 0
Regarding instant claim 25, the L of the prior art compound also corresponds to
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.
Allowable Subject Matter
Claim 26 is allowed.
Claim 25 is 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.
Conclusion
Claims 9-11, 18 and 30-33 are withdrawn.
Claim 26 is allowed.
Claims 1-2, 7, 13, 17, 19-20, 22, and 25 are rejected.
Claim 25 is objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUINCY A MCKOY whose telephone number is (703)756-4598. The examiner can normally be reached Monday - Thursday 8:00 - 6:00.
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 at 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QUINCY A. MCKOY/
Patent Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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