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 .
Foreign Priority
This Application is a 371 of PCT/SG2020/050368, filed 06/25/2020 and claims foreign priority to SG10201905970U, filed 06/27/2019 in the Republic of Singapore.
Claim Status
Claims 1, 3-9, 11, 13 and 15-18 are currently pending and subject to examination.
Claim Rejections – Withdrawn – Overcome by Amendment
The rejection of claims 7 and 13 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn.
The rejection of claim 12 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form is withdrawn.
The rejection of claims 1-9 under 35 U.S.C. 102(a)(1) as being anticipated by He et al. (Organic Letters, Vol. 16, Issue 12, Published June 6, 2014) is withdrawn.
The rejection of claims 1-4, 7-8, 11-13 and 15 under 35 U.S.C. 102(a)(1) as being anticipated by Dombroski et al. (EP 1247810 A1) is withdrawn.
The rejection of claims 1-4, 7-8, 11-13 and 15 under 35 U.S.C. 102(a)(1) as being anticipated by Hagen et al. (WO 2013/163159 A2) is withdrawn.
Claim Rejections - 35 USC § 102 – New Grounds of Rejection Necessitated by Amendment
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.”
Claim(s) 1, 3, 7-8 and 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huber et al. (Angewandte Chemie, Vol. 120, Issue 16, April 7, 2008, Supporting information, p. S1-20, S17).
Claim 1 is directed towards a compound of formula (I):
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Huber teaches a compound falling within the genus of formula (I):
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Huber, Supporting Information. p. S17
As in Formula (I) of claim 1, in compound 16, one X is C-OR9 and the other is CH, Z is CH2, R1-4 and 7-9 are H and R5-6 are phenyl, n is 2 and Y is CH. Therefore, claim 1 is anticipated.
Claims 3, 7-8 and 16-17 read on compound 16 and are therefore also anticipated.
Claim(s) 1, 3-4, 8 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Doemling (US 8,163,789 B2, published Apr. 24, 2012).
Claim 1 is directed towards a compound of formula (I):
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Doemling teaches compounds falling within the genus of formula (I), for example:
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Doemling, Specification, col. 4;
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Doemling, Specification, col. 32.
As in Formula (I) of claim 1, in the compound of Doemling, one X is CH and the other is N, Z is CH2, R1-4 and 8 are H, R6 is COOR9, C9 is methyl, and R5-6 are unsubstituted or substituted phenyl, n is 1 and Y is N. Therefore, claim 1 is anticipated.
Claims 3-4, 8, and 16 read on the compounds of Doemling and are thus also anticipated.
Claim(s) 1, 3-4, 11, 16 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chamoin et al. (US 2010/0075966 A1, published Mar. 25, 2010).
Claim 1 is directed towards a compound of formula (I):
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Chamoin teaches compounds falling within formula (I) (compounds 7.4 and 7.9):
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Chamoin, Specification, p. 33, para. 0359.
As in Formula (I) of claim 1, in compound 7.4, one X is CH and the other is C-OR9 wherein R9 is methyl, R1 is OR9 wherein R9 is methyl, R2-4 are H, R8 is substituted phenyl, R5 and R6 are substituted phenyl and R7 is COOR9 wherein R9 is methyl.
As in Formula (I) of claim 1, in compound 7.9, one X is CH and the other is N, Y is N, Z is CH2, R1-4 are H, R8 is substituted phenyl, R5 and R6 are substituted phenyl and R7 is COOR9 wherein R9 is methyl.
Therefore, claim 1 is anticipated.
Claims 3-4 and 16 read on the compounds above and are therefore also anticipated.
Claim 11 is directed towards a pharmaceutical composition comprising the compound of formula (I) and a pharmaceutically acceptable excipient or carrier. Chamoin teaches a pharmaceutical composition comprising the compound of formula (I) and a pharmaceutically acceptable carrier (Chamoin, Specification, p. 11, para 0307). Therefore, claim 11 is anticipated.
Claim 18 reads on a pharmaceutical composition comprising the compound of Chamoin. Therefore, claim 18 is anticipated.
Claim Objections
Claims 5-6, 9, 13 and 15 are 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.
Conclusion
No claim is found to be allowable.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATHER DAHLIN whose telephone number is (571)270-0436. The examiner can normally be reached 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Lundgren can be reached on (571) 272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HEATHER DAHLIN/Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629