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 .
According to paper filed on July 6, 2026, the applicants have elected specific species for further prosecution.
Claims 20-39 are pending in the application.
The elected species directed to compounds of formula B is allowable over the prior art. Therefore, search has now been extended to additional species where variable L1 represents 5-membered heterocyclic ring containing 1, 2 or 3 N atoms.
Claim Rejections - 35 USC § 112
5. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20-39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no written description for preparing instant compounds of formula B where variables L1-L6 represent every known heteroaryl, heterocycle, aryl, cycloalkyl, carbene or N-heterocyclic carbene in the art and variables LP1-LP6 are linked through a linker to variables L1-L6. The only written description is for preparing and using instant compounds of formula B is where variables L2 and L5 represent phenyl groups, variables L3 and L6 represent pyridine rings, variables L1 and L4 represent either 6-membered heteroaryl ring containing only 1 N atom or 5-membered heteroaryl rings containing only 1-3 N atoms, variables A1 and A2 represent either O or N and variables LP1-LP6 are linked directly to variables L1-L6 as shown by compounds disclosed on pages 75-113 of the specification. It is of note that for variables L1 and L4, 5-membered heteroaryl rings do not even exist in the art where all variables Y1-Y8, V1 and V4 represent N, P, B or all variablesY1-Y8 represent O, S or Se.
IMPROPER MARKUSH GROUP
. Claims 20-39 are rejected on the basis that it contains an Improper Markush grouping of alternatives. See In re Harnisch, 631 F2d 716,721-22 (CCPA 1980) and Ex parte Hozumi, 3USPQ 2d 1059, 1060 (Bd. Pat. App. & int. 1984). A Markush group is proper if the alternatives defined by the Markush group 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 alternatives are all members of the same recognized physical or chemical class of 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 when the alternatives share both a substantial structure feature and a common use that flows from the substantial structural feature, see MPEP @ 2117.
The Markush grouping of is improper because the alternatives defined by the Markush grouping do not share a single structural similarity for the following reasons:
In compounds of formula B, the values of variables L1-L6 based on the size and type of rings (aryl or cycloalkyl versus heteroaryl etc.) and number and types of heteroatoms present in these rings are critical for the common structure of these compounds. Furthermore, the structure query for structure searching will also be different based on the values of these variables L1-L6.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 20-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20, 24-29, 31-37 and 39 of application 17/466,353 (recently allowed). Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds of the cited application anticipate the instant claims when variables L2 and L5 represent phenyl groups, variables L3 and L6 represent pyridine rings, variables L1 and L4 represent 5-membered heteroaryl rings containing 1-3 N atoms and variables A1 and A2 represent O in the instant compounds of formula B.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The instant compounds of formula B directed to the elected species, are allowable over the prior art since they are neither disclosed nor obvious over the prior art. In the art, Jian (WO 2015/027060 A1, cited on applicant’s form 1449) discloses compounds in examples 1-14 (see pages 36-72) which are related to instant compounds. However, the compounds of Jian differ in structure by lacking instant variables L4, L5 and A2. Furthermore, there is no teaching, suggestion or motivation in the prior art to modify the compounds of Jian to prepare instant compounds.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARANJIT AULAKH whose telephone number is (571)272-0678. The examiner can normally be reached Monday-Friday 7:00-3:30.
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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621
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