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.
Request for Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 9, 2026 has been entered.
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Claim Rejections – Withdrawn – Overcome by Amendment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 claim(s) 1, 3, 7-8 and 16-17 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 (Angewandte Chemie, Vol. 120, Issue 16, April 7, 2008, Supporting information, p. S1-20, S17) is withdrawn.
The rejection of claim(s) 1, 3-4, 8 and 16 under 35 U.S.C. 102(a)(1) as being anticipated by Doemling (US 8,163,789 B2, published Apr. 24, 2012) is withdrawn.
The rejection of claim(s) 1, 3-4, 11, 16 and 18 under 35 U.S.C. 102(a)(1) as being anticipated by Chamoin et al. (US 2010/0075966 A1, published Mar. 25, 2010) is withdrawn.
The above rejections were overcome by Applicant’s amendments to the claims.
Claim Rejections – 35 USC § 112(d)
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.”
Claim 9 is 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 9 fails to include all the limitation of the claim upon which it depends because the following compound is not a compound of formula (I) as in claim 1:
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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
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, 4, 7, 8 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grassi et al. (ChemEurJ, Vol. 19, Issue 4, January 21, 2013, pp. 1466-75).
Claim 1 is directed towards a compound of formula (I) or a pharmaceutically acceptable salt there:
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.
Grassi teaches a compounds falling within the genus of formula (I) or a pharmaceutically acceptable salt thereof:
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Grassi, p. 1467, Scheme 2.
Therefore, claim 1 is anticipated.
Claims 3, 4, 7-8, and 16 read on the compounds L2 and L3 and are therefore also anticipated.
Claim(s) 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by He et al. (Organic Letters, Vol. 16, Issue 12, June 6, 2014, Supporting Information).
Claim 9 is directed towards the compound:
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He teaches this compound: “1-benzyl-[(4S,5S)-4,5-dihydro-4,5-diphenyl-]-1H-imidazole” (He, Supporting Information, p. 4), which has the following structure:
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Drawn by Examiner with JChem.
Therefore, claim 9 is anticipated.
Claim Objections – Dependent on Rejected Base Claim
Claims 5, 6, 11, 13, 15 and 17-18 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.
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
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