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 1-4, 6, 8-11, 14, 15, 17, 23 and 25-31 are pending in the application. Claims 1-4, 6, 8-11, 14, 15, 17 and 25-31 are rejected. Claim 23 is allowed.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement(s) filed on October 22nd, 2025.
Priority
Due to the presence of intervening prior art (WO 2024/229444 A2), the disclosure of Provisional Application No. 63/351,134 was reviewed. Since the provisional application supports each claim under examination, the earliest effective filing date for prior art purposes is June 10th, 2022.
Claim Objections
In the definition of R5 in claim 1, the option “NRaRb-C(O)-C1-C6-alkyl)” should be amended to delete the closed parenthesis at the end of the term.
Claim Rejections - 35 USC § 112(b)
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 1-4, 6, 8-11, 14, 15, 17 and 25-31 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.
Claims 1-3, 6, 8-11, 14, 15, 17 and 25-31 are rejected as indefinite based on the definition of variable A. Claim 1 recites that A is a “nitrogen-containing … ring system … optionally containing one or two heteroatoms independently selected from nitrogen, oxygen, and sulfur…”. The broad generic term appears to require the presence of at least one nitrogen atom but the definition also recites that heteroatoms are independently selected from a list that, on its face, would not otherwise appear to require the selection of nitrogen. There appear to be several interpretations:
“A” must contain one nitrogen heteroatom and can optionally further contain two additional heteroatoms independents selected from nitrogen, oxygen, and sulfur;
“A” must contain one nitrogen heteroatom and the ring can contain one additional heteroatom selected from nitrogen, oxygen, and sulfur;
“A” need not contain any heteroatoms but when it does, it contains up to two heteroatoms selected from nitrogen, oxygen, and sulfur; and
“A” must contain one or two heteroatoms and each is independently selected from nitrogen, oxygen, and sulfur.
Interpretation (2) appears to be the broadest definition that would be supported by the original disclosure since, for instance, no examples are disclosed containing three heteroatoms (as permitted by interpretation (1)), no examples are disclosed lacking a nitrogen heteroatom (as permitted by interpretations (3) and (4)). Dependent claims 2, 3, 6, 8-11, 14, 15, 17 and 25-31 are rejected as indefinite for the same reason and where claim 3 only further complicates the issue since it omits “nitrogen-containing” from the generic limitation. It is suggested that Applicant amend claim 1 to conform to interpretation (2) to avoid introducing new matter.
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, the definition of R5 and R16 ring formation in claim 1 recites the broad recitation “substituted with one, two, three, four or five groups”, and the claim also recites “selected from one, two, three, or four groups” which is the narrower statement of the range/limitation. 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. Dependent claims 2-4, 6, 8, 9, 14, 15, 17 and 25-31 are rejected as indefinite for the same reason.
Claim 10 is rejected as indefinite since the fourth option contains the variables Rc and Rd that are not defined in either claim 10 or parent claim 1.
Claim Rejections - 35 USC § 112(d)
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 pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claim 3 is 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. Claims 1 and 3 are rejected as indefinite based on the definition of “A;” however, since claim 3 no longer requires that “A” be “nitrogen-containing” and at least one interpretation of claim 1 is that A must contain nitrogen, claim 3 fails to further limit its parent claim under at least one claim construction of parent claim 1. 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 4 is 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 4 provides for the fifth, sixth and eleventh options to be substituted by -CH2CN, which is not embraced by parent claim 1. 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. It is suggested that Applicant convert claim 4 to independent form to avoid introducing new matter by broadening claim 1.
Claim 10 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. The options for the various rings to be substituted by C1-C3alkoxyC1-C3alkyl and benzyl do not fall within the scope of parent claim 1. 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. It is suggested that Applicant amend claim 10 to independent form to avoid introducing new matter by broadening claim 1 or delete the noted options.
Claim 11 is 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 11 recites that R5 is –(C1-C3alkyl)-R6 where R6 can be an eight- or nine-membered bicyclic fused saturated ring system or a ten-membered tricyclic saturated ring system wherein these options optionally contain a nitrogen atom. Parent claim 1 only provides for R5 to be up to C6 cycloalkyl in the option C3-C6cyclolalkylC1-C6alkyl. 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.
Allowable Subject Matter
Claim 23 is allowed.
The Examiner generally agrees with the ISR regarding the closest prior art documents; however, the Examiner finds that the discussion for inventive step does not translate to a case for obviousness under U.S. practice. While, for instance, WO 2021/129824 A1 is generic to compounds having a halogen moiety at the instantly recited R’ position, the prior art fails to reasonably suggest why one of the subset of compounds having a heteroaryl group corresponding to the instant variable R4 should be chosen for modification and particularly modified to contain a halogen at the instantly claimed R’ position relative to the myriad additional modifications that could conceivably be made within the genus of the prior art. Even combining additional references (such as U.S. Patent PGPub No. 2019/0144444 A1) that disclose compounds having a halogen at the α-position of an α,β-unsaturated carbonyl, the corresponding compounds (and the majority of exemplary compounds) do not contain a heteroaryl group corresponding to R4. Any case for obviousness therefore would rely strongly on improper hindsight bias to navigate the prior art generic structures to arrive at any compounds instantly claimed.
Conclusion
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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