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 .
Response to Amendments
2. Claim amendments filed January 29, 2026 are acknowledged.
3. Any rejections not explicitly maintained herein are withdrawn.
Election/Restrictions
4. In accordance with the MPEP 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
Status of Claims
5. Claims 1-6, 8, 10, 15-16, 24-25, 29, 36, 41-44 and 50-52 are pending in the instant application. Claims 6, 25, and 43-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention and species. Therefore, claims 1-5, 8, 10, 15-16, 24, 29, 36, 41-42, and 50-52 read on an elected invention and species and are therefore under consideration in the instant application.
Claim Objections
6. Claim 10 is objected to for depending on a rejected base claim.
Claim Rejections - 35 USC § 102
7. 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.
8. 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.
9. Claims 1-5, 15-16, 24, 41, 42, 50, 51, and 52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAplus Registry Number: RN 1285221-21-7. [Database Registry Chemical Abstracts Service, Columbus, Ohio, Accession No. RN 1285221-21-7Entered STN: 24 Apr 2011].
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RN 1285221-21-7 anticipates the instantly claimed compounds of claim 1 as follows:
X1, X2, X3, and X4 are CH, R4 is Br, n is 0, the bond from A is a double bond, A is CH, m is 1, R1 and R2 are H, Z is thienyl, R3 is -CO2H.
RN 1285221-21-7 anticipates the 6th compound in claim 41, 4th compound in claim 51 as follows:
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5-[(6-bromo-1 H-indol-1-yl)methyl]thiophene-2-carboxylic acid.
Registry number 1285221-21-7 is available as prior art as of 24 Apr 2011, the date it was indexed into the CAplus database.
Regarding the compositions of claims 42 and 50, comprising the anticipatory compounds and a carrier, the Registry entry for Registry no. 1285221-21-7 discloses a mass solubility of 0.021 g/L, in unbuffered water at pH 4.29. This teaching anticipates the claimed composition, wherein the compounds are present with an excipient (i.e., water).
See MPEP 2128: ELECTRONIC PUBLICATIONS AS PRIOR ART Status as a "Printed Publication" An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) Since this date represents the date that each compound entered the CAPlus database on STN, this represents the date that each compound was made accessible to the public.
The aforementioned compound anticipates the instantly claimed compounds: It is further noted that for the purposes of determining if a reference is a “printed publication” for the purposes of 102(b), MPEP 2128 states the following:
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where “prior art disclosures…on an on-line database are considered to be publicly available as of the date the item was publicly posted.” Since each of the database entries above lists the date that each compound was entered into the on-line database, the compounds were made publicly available as of that date in each citation, and the claims are anticipated.
10. Claims 1-4, 8, 16, 24, 42, and 52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAplus Registry Number: RN 1075808-12-6. [Database Registry Chemical Abstracts Service, Columbus, Ohio, Accession No. RN 1075808-12-6 Entered STN: 26 Nov 2008].
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RN 1075808-12-6 anticipates the instantly claimed compounds of claim 1 as follows:
X1, X2, X3, and X4 are CH, R4 is heterocycle substituted with R7, two R7 groups form =O, n is 0, the bond from A is a single bond, A is CH, m is 1, R1 and R2 form =O, Z is substituted triazole, R3 is -NH(methyl).
Registry number 1075808-12-6 is available as prior art as of 26 Nov 2008, the date it was indexed into the CAplus database.
Regarding the compositions of claim 42, comprising the anticipatory compounds and a carrier, the Registry entry for Registry no. 1075808-12-6 discloses a mass solubility of 0.012 g/L, in unbuffered water at pH 7.00. This teaching anticipates the claimed composition, wherein the compounds are present with an excipient (i.e., water).
See MPEP 2128: ELECTRONIC PUBLICATIONS AS PRIOR ART Status as a "Printed Publication" An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) Since this date represents the date that each compound entered the CAPlus database on STN, this represents the date that each compound was made accessible to the public.
The aforementioned compound anticipates the instantly claimed compounds: It is further noted that for the purposes of determining if a reference is a “printed publication” for the purposes of 102(b), MPEP 2128 states the following:
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where “prior art disclosures…on an on-line database are considered to be publicly available as of the date the item was publicly posted.” Since each of the database entries above lists the date that each compound was entered into the on-line database, the compounds were made publicly available as of that date in each citation, and the claims are anticipated.
11. Claims 1-4, 16, 24, 29, 36, 42, and 52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAplus Registry Number: RN 1030804-39-7. [Database Registry Chemical Abstracts Service, Columbus, Ohio, Accession No. RN 1030804-39-7, Entered STN: 26 Jun 2008].
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RN 1030804-39-7 anticipates the instantly claimed compounds of claim 1 as follows:
X1, X2, X3, and X4 are CH, R4 is heteroaryl substituted with R6, R6 is methyl, n is 0, the bond from A is a single bond, A is CH, m is 1, R1 and R2 together form =O, Z is pyrrolyl substituted with two R6, both R6 are methyl, R3 is -CO2methyl.
Registry number 1030804-39-7 is available as prior art as of 26 Jun 2008, the date it was indexed into the CAplus database.
Regarding the compositions of claim 42, comprising the anticipatory compounds and a carrier, the Registry entry for Registry no. 1030804-39-7 discloses a mass solubility of 0.028 g/L, in unbuffered water at pH 7.00. This teaching anticipates the claimed composition, wherein the compounds are present with an excipient (i.e., water).
See MPEP 2128: ELECTRONIC PUBLICATIONS AS PRIOR ART Status as a "Printed Publication" An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) Since this date represents the date that each compound entered the CAPlus database on STN, this represents the date that each compound was made accessible to the public.
The aforementioned compound anticipates the instantly claimed compounds: It is further noted that for the purposes of determining if a reference is a “printed publication” for the purposes of 102(b), MPEP 2128 states the following:
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where “prior art disclosures…on an on-line database are considered to be publicly available as of the date the item was publicly posted.” Since each of the database entries above lists the date that each compound was entered into the on-line database, the compounds were made publicly available as of that date in each citation, and the claims are anticipated.
Conclusion
12. No claims allowed.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha Shterengarts whose telephone number is (571)270-5316. The examiner can normally be reached on Monday thru Thursday 9-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMANTHA L SHTERENGARTS/Primary Examiner, Art Unit 1623