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
Amendments filed June 25, 2026 are acknowledged.
Any rejections not explicitly maintained herein are withdrawn.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.
Election/Restrictions
5. The restriction requirement mailed June 27, 2022 is withdrawn. All claims are rejoined.
Status of the Claims
6. Claims 1, 24, 26, 30-34, 40-45, 54, 57, 59-61, 63-67, 69-71, 73-74, 78-79, and 95-103 are pending in the instant application.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 26, 34, 40-45, 57, 59-61, 63-67, 69-71 and 73 are 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 26 recites R1 variables that fall outside the scope of the claim from which it depends. Claim 34 recites A variables that fall outside the scope of the claim from which it depends. Claim 40 recites L1 variables that fall outside the scope of the claim from which it depends. Claim 41 recites L1 variables that fall outside the scope of the claim from which it depends. Claim 42 recites L1 variables that fall outside the scope of the claim from which it depends. Claim 43 recites L1 variables that fall outside the scope of the claim from which it depends. Claim 44 recites L1 variables that fall outside the scope of the claim from which it depends. Claim 45 recites L1 variables that fall outside the scope of the claim from which it depends. Claim 57 recites B variables that fall outside the scope of the claim from which it depends. Claim 59 recites B variables that fall outside the scope of the claim from which it depends. Claim 60 recites B variables that fall outside the scope of the claim from which it depends. Claim 61 recites B variables that fall outside the scope of the claim from which it depends. Claim 63 recites B variables that fall outside the scope of the claim from which it depends. Claim 64 recites B variables that fall outside the scope of the claim from which it depends. Claim 65 recites B variables that fall outside the scope of the claim from which it depends. Claim 66 recites B variables that fall outside the scope of the claim from which it depends. Claim 67 recites B variables that fall outside the scope of the claim from which it depends. Claim 69 recites B variables that fall outside the scope of the claim from which it depends. Claim 70 recites compounds that fall outside the scope of the claim from which it depends. Claim 71 recites compounds that fall outside the scope of the claim from which it depends. Claim 73 recites compounds that fall outside the scope of the claim from which it depends.
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.
Claim Rejections - 35 USC § 102
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.
9. The following is a quotation of the appropriate paragraphs of pre-AIA 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.
10. Claims 1, 24, 32, 33, 54, 74, and 102 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Number: RN 1938294-69-9. [Database Registry Chemical Abstracts Service, Columbus, Ohio, Accession No. RN 1938294-69-9. Entered STN: 24 Jun 2016].
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Registry number 1938294-69-9 is available as prior art as of 24 Jun 2016, the date it was indexed into the CAS database. Registry number 1938294-69-9 anticipates compounds of formula I-A wherein R1 is H, A is pyrazol with methyl and ethyl, L1 is -C(O)-NRL1-, RL1 is H, B is
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Regarding the compositions of claim 74, comprising the anticipatory compounds and an excipient, the Registry entry for Registry no. 1938294-69-9 discloses a mass solubility of 1 g/L, in unbuffered water at pH 10.069. This teaching of water 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 compounds anticipate 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
11. No claims are allowed.
12. 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.
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.
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
/SAMANTHA L SHTERENGARTS/Primary Examiner, Art Unit 1623
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