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 Arguments and Amendment filed, 02/04/2026, wherein the Amendment cancelled claims 1, 3-7, and 9-12 and added claims 13-16.
Claims 13-16 are pending.
Priority
This application claims the following priority:
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Election/Restrictions
Applicant’s election without traverse of Group I, the compound and compositions thereof, and the species
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of formula (I), in the reply filed on 10/24/2024, is acknowledged.
The elected species is allowable over the prior art.
In the instant amendment to the claims, dated 02/04/2026, species ZKD-2-1; ZKD-17; ZBM-11; ZBM-29, and ZBM-30, were deleted.
As such, the examination of the Markush claim has been extended.
As detailed in the following prior art rejections, the generic claim encompassing the elected species was not found patentable. Therefore, the provisional election of species is given effect, the examination is restricted to the elected species only, and claims not reading on the elected species are held withdrawn. MPEP 803.02; Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App. lnt. 1987).
Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection through amendment, the amended Markush-type claim will be reexamined to the extent necessary to determine patentability of the Markush-type claim. See MPEP 803.02.
Claims 15-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and subject matter, there being no allowable generic or linking claim.
Claims 13-14 are examined on the merits herein.
REJECTIONS WITHDRAWN
The status for each rejection and/or objection in the previous Office Action is set out below.
Claim Objections
Applicant’s amendments to the claims that provide clear structural depictions, are sufficient to overcome this objection.
35 U.S.C. § 102
Applicant’s deletion of species relied upon in the previous prior art rejections, is sufficient to overcome these rejections.
35 U.S.C. § 103
Applicant’s deletion of species relied upon in the previous prior art rejection, is sufficient to overcome this rejection.
REJECTIONS-MAINTAINED & NEW
Applicant has deleted the previously searched species. As such, the newly applied prior art rejections are proper.
Note: In the 102 rejection over STN Registry File 1837753-97-5 a typo was made in referencing
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as ZBM-11; this compound is instant ZBM-5.
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(Maintained) Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Registry File 1837753-97-5 (published 2015, PTO-892).
STN Registry file teaches:
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(pg. 2), which is instant ZBM-5.
Registry number 1837753-97-5 is available as prior art as of 12/27/2015, the date it was indexed into the CAplus database. Since this date represents the date that the compound entered the CAPlus database on STN, this represents the date that each compound was made accessible to the public.
Per MPEP 2128, an electronic publication, including an online database or Internet publication (e.g., discussion group, forum, digital video, or social media post), is considered to be a "printed publication" within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 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). . . Electronic publications on the internet or on an online database are considered to be publicly available as of the date the item was publicly posted.”
(New) Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Registry File 1580971-85-2 (published 2014, PTO-892).
STN Registry file teaches:
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(pg. 2), which is instant ZSD-54.
Registry number 1580971-85-2 is available as prior art as of 04/07/2014, the date it was indexed into the CAplus database. Since this date represents the date that the compound entered the CAPlus database on STN, this represents the date that each compound was made accessible to the public.
Per MPEP 2128, an electronic publication, including an online database or Internet publication (e.g., discussion group, forum, digital video, or social media post), is considered to be a "printed publication" within the meaning of 35 U.S.C. 102(a)(1) and pre-AIA 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). . . Electronic publications on the internet or on an online database are considered to be publicly available as of the date the item was publicly posted.”
Response to Arguments
Applicant argues that the species relied upon in the previous Office Action’s prior art rejections have been deleted (see pgs. 6-7, Remarks).
This argument is persuasive, expect for compound
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. See the above prior art rejection over this compound for details.
Free of the Prior Art
Claim 14 is objected to 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.
Claim 14 is free of the prior art. While STN Registry File 1837753-97-5 and STN Registry File 1580971-85-2, teach compounds of instant claim 13, these references do not teach these compounds in pharmaceutical compositions comprising a pharmaceutically acceptable carriers. Moreover, there is no motivation for an ordinary skilled artisan to add these compounds to pharmaceutical compositions comprising pharmaceutically acceptable carriers. As such, claim 14 is free of the prior art.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN WELLS whose telephone number is (571)272-7316. The examiner can normally be reached M-F 7:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James (Jim) Alstrum-Acevedo can be reached on 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN WELLS/Examiner, Art Unit 1622