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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Election/Restrictions
Applicants’ claim amendments render moot the prior art rejection of record.
The Examiner extended the Markush search to the full scope of instant claims 30 and 38 but did not find any prior art.
Therefore, the Election of Species Requirement of 2 May 2025, is withdrawn, as all claims are free of the prior art.
All claims have been examined on the merits.
Current Status of 19/097,371
This Office Action is responsive to the amended claims of 16 February 2026.
Claims 30-39 have been examined on the merits. Claims 30-38 were withdrawn, but are now rejoined. Claim 39 is currently amended.
Priority
The effective filing date is 23 February 2022.
Response to Arguments
The Examiner acknowledges receipt of and has reviewed Applicants’ claim amendments and Reply of 16 February 2026.
Applicants canceled claim 43 thereby rendering moot the claim objection of paragraph 14 (in previous Office Action).
Applicants revised claim 39 to depend on claim 30; Applicants canceled claims 41 and 43 thereby rendering moot the anticipatory prior art rejection of record (see paragraphs 15-17 of the previous Office Action).
Response to Amendment
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 30-39 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.
Previously withdrawn, now rejoined claim 30 recites the limitation "R2 is optionally substituted C3-10 cycloalkyl" in the provisio/disclaimer. There is insufficient antecedent basis for this limitation in the claim.
As drafted, the limitation "R2 is optionally substituted C3-10 cycloalkyl" in the disclaimer of claim 30 renders the metes and bounds of the claim undefined (hence rendering claim 30 indefinite under 35 USC 112(b)). The artisan does not know where antecedent basis is for "R2 is optionally substituted C3-10 cycloalkyl" in the affirmative portion of the claim, which is drawn to "optionally substituted C3-6 cycloalkyl". This indefinite rejection is made because Applicants attempt to disclaim "optionally substituted C3-10 cycloalkyl" but affirmatively claim "R2 is optionally substituted C3-6 cycloalkyl". One cannot disclaim more than one originally affirmatively claims.
This same problem plagues the disclaimed “A is C1-8 alkyl” since “A” never affirmatively claims “C1-8 alkyl” as an affirmative embodiment.
Claims 31-37 are similarly rejected as indefinite under 35 USC 112(b) since these claims refer back to claim 30 but do not remedy the rationale underpinning the basis for rejecting claim 30.
This rejection is properly made FINAL since claims 30-37 were withdrawn during the last Office Action but are now rejoined (due to Applicants’ amendments to claim 39).
Claim 38 recites the limitations "compound 150” and “compound 267”. There is insufficient antecedent basis for these limitations in the claim.
As drafted, these compound names are missing compound illustrations which renders the metes and bounds of claim 38 undefined (hence rendering claim 38 indefinite under 35 USC 112(b)). The artisan does not know if the compound names without illustrations are part of claim 38 or if Applicants intend on removing these compounds given that all the other compounds of claim 38 have names and illustrations.
To render moot: please add the missing illustrations.
This rejection is properly made FINAL since claim 38 was withdrawn during the last Office Action but is now rejoined (due to Applicants’ amendments to claim 39).
Claim 39 recites the limitation "the compound of claim 1". There is insufficient antecedent basis for this limitation in the claim.
As drafted, the claim 39 refers back to a canceled claim 1. This renders the metes and bounds of claim 39 undefined (hence rendering claim 39 indefinite under 35 USC 112(b)) since the artisan does not know where claim 1 is (claim 1 is canceled). Do Applicants really intend claim 39 to refer back to claim 30?
This rejection is properly made FINAL given Applicants’ claim amendments to claim 39.
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 39 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 39, which purports to refer back to claim 1, does not properly further limit claim 1 since claim 1 is canceled. A claim cannot refer back to a canceled claim. Therefore, claim 39 is rejected under 35 USC 112(d).
Do Applicants really intend claim 39 to refer back to claim 30?
This rejection is properly made FINAL given Applicants’ claim amendments to claim 39.
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.
Conclusion
No claims are presently allowable as written.
There is no known prior art reference that either teaches or anticipates a compound according to instant claims 30 and 38.
The reference WELSH used to be considered prior art.
However, Applicants’ claim 30 disclaimer disclaims the WELSH compound therefore WELSH is not prior art against claim 30.
Moreover, the WELSH compound does not read on any of the claim 38 compounds.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew D Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625