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
This office action is in response to Applicant’s reply filed on January 23, 2026.
Status of Claims
Amendment of claims 1, 7, 9-10, 13 and 17-18 is acknowledged.
Claims 1-20 are currently pending and are the subject of this office action.
Claim 1-9 were withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 27, 2021.
Due to Applicant amendments, the previously examined species:
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Is no longer encompassed by the instant claims
So, the examination was expanded to the following species:
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In summary, the following species are under examination:
1-
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originally elected by Applicant,
and
2-
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expanded species.
The elected species reads on claims 10, 12-13, 15-16 and 19-20.
The expanded species reads on claims 10, 13-14 and 19-20.
Consequently, claims 11 and 17-18 are further withdrawn since they do not read on any of the two examined species.
The combined set of claims that read on one or the two species, and as a consequence, are presently under examination are claims 10, 12-16 and 19-20.
Priority
The present application is a 371 of PCT/EP2018/079824 filed on 10/31/2018 and claims priority to foreign application EP 17306507.9 filed on 10/31/2017.
Rejections and/or Objections and Response to Arguments
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated (Maintained Rejections and/or Objections) or newly applied (New Rejections and/or Objections, Necessitated by Amendment or New Rejections and/or Objections not Necessitated by Amendment). They constitute the complete set presently being applied to the instant application.
Responses to Applicant’s arguments have been addressed immediately after the corresponding rejections, or in the section: Withdrawn Rejections and/or Objections, if the rejection was withdrawn.
Claim Rejections - 35 USC § 102 (New Rejection Necessitated by Amendment).
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 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.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 10, 13-14 and 19-20 is/are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Zhao et. al. (Antiviral Research (2012) 96:91-99).
For claims 10, 13-14 and 19-20, Zhao teaches pharmaceutical compositions comprising the compound 14 (see Scheme 1 on page 94):
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The above compound corresponds to instant compound Ia, wherein:
W is:
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X is Hydrogen, and
Ar is a 9-membered heteroaryl.
Claim Objections
Claims 12 and 15-16 are objected to in part as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and to recite only the elected species.
Note that claims 12 and 15-16 are objected to in part herein insofar as it contains non-elected subject matter to which the prior art search has not yet been extended. That part which has been searched, however (consistent with the election of species requirement as previously discussed), would be allowable if the claim was amended in independent form including all the limitations of the base claim and any intervening claims, and to remove the currently non-elected subject matter (i.e., all the species except for the elected species).
NOTE: Applicant should clarify the structural differences between groups pinanyl and isopinocamphenyl.
Applicant responded that the specification discloses exemplary pinanyl and isopinocamphenyl groups in paragraph [0219] of the US 2020/0281873 publication.
However, paragraph [0219} discloses the following:
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However, the first compound from the left is identical to the fourth compound, and the second compound is identical to the third compound, so there are 4 different compounds on display, which one of those is pinanyl, isopinocamphenyl or bornanyl?
Conclusion
No claims are allowed.
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 extension fee 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 date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCOS L SZNAIDMAN whose telephone number is (571)270-3498. The examiner can normally be reached on Flexing M-F 7 AM-7 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L. Clark can be reached on 571 272-1310. 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.
/MARCOS L SZNAIDMAN/
Primary Examiner, Art Unit 1628
February 4, 2026.
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