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
RESPONSE TO ELECTION/RESTRICTION
Applicant's election with traverse of group I, drawn to compounds of the formula X and simple compositions thereof and elected species:
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in the reply filed on 8/18/2026 is acknowledged. The traversal is on the ground(s) that the claimed inventions possess unity and each should be examined together. This is not found persuasive because the instant application is not a 371 application and is not being examined with respect to unity of invention. Thus this argument is found moot. In reference to there not being a search burden to the examiner, Applicant is remind that restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) Separate classification: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search.;
(b) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors.
(c) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s).
In reference to section (a), the inventions as claimed are not recognized as art
equivalents due to their different classification. Thus, separate fields of search
are required by the examiner.
The instantly claimed inventions may be classified in different classes/subclasses as according to CPC. For example, the elected species would be classified under C07D 401/00+ for compounds while method claims may be classified under A61P+. Thus this situation appropriately satisfies criteria (c) above. The examiner would encounter a serious search burden if a restriction requirement was not implemented. In reference to arguments suggesting that Groups I and III should be examined with respect to overlapping scope are found unpersuasive since Group III has limitations that are outside the scope of group I (e.g. variables R3,4 forming additional ring structures with each other). Thus multiple searches would be required.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12, 13, and 17-20 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.
An action on the merits of claims 1-11 and 14-16 (which reads on claims embraced by the elected invention) is contained herein. Applicant’s elected species was found free of the art and the search extended to cover similar species wherein R5 is haloalkyl, G = t-butyl or cycloalkyl, and ring system bearing X may encompass any cycloalkyl ring up to 9 carbon atoms.
Priority
The present application is a Continuation Application of US Application No. 18/306,236, filed on April 25, 2023, which is a Continuation Application of International Application No. PCT/CN2022/087511, filed on April 18, 2022, which claims priorities of the Chinese Patent Application No. CN202110413867X, filed on April 16, 2021, the Chinese Patent Application No. CN2021105177436, filed on May 12, 2021, the
Chinese Patent Application No. CN2021106375805, filed on June 8, 2021, the Chinese Patent Application No. CN2021106592421, filed on June 11, 2021, the Chinese Patent Application No. CN2021108795702, filed on July 30, 2021, the Chinese Patent Application No. CN2021110408784, filed on September 6, 2021, the Chinese Patent Application No. CN2021110888122, filed on September 16, 2021, the Chincse Patent
Application No. CN2021113070430, filed on November 5, 2021, the Chinese Patent Application No. CN2021113430120, filed on November 12, 2021, the Chinese Patent Application No. CN2021114339622, filed on November 29, 2021, the Chinese Patent Application No. CN2021115671634, filed on December 20, 2021, the Chinese Patent Application No. CN2022100298871, filed on January 12, 2022 and the Chinese
Patent Application No. CN2022101700462, filed on February 23, 2022. Benefit for the foreign applications is not accorded since subject matter disclosed within the instant application is not supported (e.g. full scope of formula X, in particular variables A, R5, etc.). The claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In re Ziegler, 992 F.2d 1197, 1200, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993); Kawaiv.Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record.
Claim Objections
Claim 10 is objected to because of the following informality:
The preamble of this claim should incorporate proper alternative language such as “A compound selected from the group consisting of..” or something similar. Correction is required.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-9 and 11 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6 of US Patent 12,116,367. Although the conflicting claims are not identical, they are not patentably distinct from each other because there is significant overlap between the two applications.
The genus structure of the instant application may fully encompass the claimed compounds of ‘367. For instance in the patent, the claimed compounds R5 is haloalkyl, G = t-butyl, X = methylene and ring system bearing X may encompass a cycloalkyl ring fall within the scope of formula X of the instant application. In other words, the patented claims may anticipate the claimed genus.
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 11 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 pre-AIA the applicant regards as the invention.
In the instant claim 1, applicant recites variable “R21” which is not embraced by the formula X or any of the definitions associated with it therein. Thus the claim and claims dependent on it which do not rectify the issue are indefinite. Correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10 and 15-16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 10 does not further limit claim 1 with respect to the following species:
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wherein R2,4 do not form together a ring system as required in claim 1. The same analysis is applicable in claims 15-16 which also recites similar embodiments for ring systems bearing variable X which lack this limitation.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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)(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.
Claims 1, 2, 4-9, and 11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated over US Patent 2023/0140238.
US Patent 2023/0140238 teaches the following compound and compositions thereof which may anticipate the claims (see col. 119, 2nd row, 2nd compound, and col. 120, claim 54 for compositions thereof):
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wherein G = isobutyl, R5 = -CF3, X= methylene, and ring embracing X forms a 7-membered cycloalkyl ring. Thus, the claims are anticipated.
Conclusion
Claims 1-11 and 15-16 are rejected. Claim 14 is objected to for being dependent on a rejected claim. The full patentability of this claim has not been determined due to prior art cited of record. See MPEP 803.02, “If the examiner determines that the elected species is allowable over the prior art, the examination of the Markush claim will be extended. If prior art is then found that anticipates or renders obvious the Markush claim with respect to a nonelected species, the Markush claim shall be rejected; claims to the nonelected species would still be held withdrawn from further consideration. The prior art search will not be extended unnecessarily to cover all nonelected species, and need not be extended beyond a proper Markush grouping.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 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 http://pair-direct.uspto.gov. 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.
/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
