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 .
Election/Restrictions
Applicant’s election without traverse of group I and the species
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in the reply filed on 7/16/26 is acknowledged.
Claims 26-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/16/26.
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 1-20 and 22-25 are rejected under 35 U.S.C. 112(b).
Claims 1-20 and 22-25 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. The instant claims are confusing and unclear as the compounds of the chemical formula
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comprise a Markush structure containing so many possible variations, such as the combination of the
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ring comprising various aromatic or heteroaromatic systems, the
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ring substituted with a variety of substituents, the
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ring comprising azetidine, pyrrolidine or piperidine, the linker L and the chelators comprising numerous structures that the scope of the claim cannot be determined. While breadth alone is not indefinite, the instant claims have an almost unlimited number of possible combinations of chemical moieties that it is not possible to determine the metes and bounds of the claims.
The dependent claims fall therewith.
Claims 1-20 and 22-25 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte
Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes
species of the claimed invention that do not share both a substantial structural feature and a common
use that flows from the substantial structural feature.
A Markush claim contains an “improper Markush grouping” if: (1) the species of the Markush
group do not share a single structural similarity,” or (2) the species do not share a common use. Members of a Markush group share a "single structural similarity” when they belong to the same recognized physical or chemical class or to the same recognized physical or chemical class or to the
same art-recognized class. Members of a Markush group share a common use when they are disclosed
in the specification or known in the art to be functionally equivalent (see Federal Register, Vol. 76, No.
27, Wednesday, February 9, 2011, p. 7166, left and middle columns, bridging paragraph).
The claims are directed to the compounds of the chemical formula
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having so many different chemical structures comprising the combination of the
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ring comprising various aromatic or heteroaromatic systems, the
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ring substituted with a variety of substituents, the
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ring comprising azetidine, pyrrolidine or piperidine, the linker L and the chelators comprising numerous structures. There is nothing of record to show a common chemical core that is specifically tied to a function in the almost unlimited breadth of the claimed compounds.
Applicant attention is directed to the third paragraph of MPEP 803.02 which discloses: “Since
the decisions in In re Weber, 580 F.2d 455, 198 USPQ 328 (CCPA 1978) and In re Haas, 580 F.2d 461, 198
USPQ 334 (CCPA 1978), it is improper for the Office to refuse to examine that which Applicants regard as
their invention, unless the subject matter in a claim lacks unity of invention. In re Harnisch, 631 F.2d
716, 206 USPQ 300 (CCPA 1980); and Ex parte Hozumi, 3 USPQ2d 1059 (Bd. Pat. App. & Int. 1984). Broadly, unity of invention exists where compounds included within a Markush group (1) share a
common utility, and (2) share a substantial structural feature essential to that utility.”
In the instant case, if it is asserted that the claims share a common utility, it is noted the only
shared structure is a
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bound to adamantane that does not allow the genus to have an art recognized classification. Hence, the Markush grouping is improper.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual
species or grouping of species that share a substantial structural feature as well as a common use that
flows from the substantial structural feature, or present a sufficient showing that the species recited in
the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that
flows from the substantial structural feature. This is a rejection on the merits and may be appealed to
the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1)
(emphasis provided).
The dependent claims fall therewith.
Claims 7,8 and 21 is rejected under 35 U.S.C. 112(d).
Claims 7,8 and 21 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. The instant claims 7,8 and 21 do not further limit the instant claim 1 to which they depend as the R1a-R1d of the instant claim 1 do not comprise hydrogen and the compounds of the instant claims 7,8, and 21 all comprise R1b-R1d that are hydrogen. 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.
The dependent claims fall therewith.
Conclusion
No claims are allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA JEAN PERREIRA whose telephone number is (571)272-1354. The examiner can normally be reached M9-3, T9-3, W9-3, Th9-2, F9-2.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA J PERREIRA/Examiner, Art Unit 1618
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