A client wants to file with a petition for accelerated examination. Assume conformity with the 3/20 and other rules. Search has been done, IMO more extensive than in the USPTO “model”. The question relates to the “support document” (AESD) and what is a “limitation” that needs to be pointed-out in the prior art.
All claims relate to a single chemical species, defined by a single specific molecular structure, graphically depicted in each of the three indie claim(s) (composition, process of making, method using it)- no Markush groups for substituents R1, R2, etc. Narrow but we’re happy with it bcs of “unexpected results” re: pharma efficacy.
Finally the question: what are the “limitations” of the indie composition claim? On the one hand, the claim is drawn to a single chemical species. There is one “limitation” only - that specific structure. Change one atom or bond and ur outside the literal scope of the claim.
On the other hand, the structure could be viewed as broken-down into a “central” heterocyclic ring having N-atom, a substituent on the N, and substituents on two adjacent carbons at particular positions of the heterocyclic ring.
The closest art I found has my “central ring” and my N-substituent. But the PA does not disclose my adjacent substituents that together form a fused ring.
My gut is to take the “lead compound” approach and rely on no motivation to modify on really good test results. But why make statements at the initial stage if I can simply argue that the sole “limitation” of the claim - the exact chem. structure -is nowhere to be found after a diligent (e.g. CAS structure) search? Any thoughts? Any war stories I might benefit from? Is AE a bad idea?
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Topic: Accelerated Examination (Read 401 times)
