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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/27/2026 has been entered.
Response to Arguments
Applicant’s arguments, see pp. 9-14, filed 04/27/2026, with respect to the rejection of claims 1, 3, 5 and 7-11 under 35 U.S.C. 102((a)(1)/(a)(2)) as anticipated by U.S. Patent No. 5,710,155; the rejection of claims 1, 3, 5 and 7-13 under 35 U.S.C. 102(a)(1) as anticipated by Mazzone; and the rejection of claims 1, 5, 7-10 and 13-14 under 35 U.S.C. 102(a)(1) as anticipated by RN 517894-99-4 have been fully considered and are persuasive. Amendments overcome each rejection. The rejection(s) of 11/25/2025 has been withdrawn. Note the claims have only been searched to the extent necessary to find additional prior art reading on the claims pursuant to the election of species requirement of record.
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.
Claims 1, 3, 5, 8 and 10-11 are rejected under 35 U.S.C. 102((a)(1)/(a)(2)) as being anticipated by U.S. Patent No. 5,710,155 to Schnorrenberg et al.
Schnorrenberg et al. teaches
PNG
media_image1.png
203
254
media_image1.png
Greyscale
(Example 41, Col. 17) which is a compound of Formula II of claims 1, 5 and 8, and 10-11 wherein R1 is -CH2-phenyl wherein the phenyl is substituted with two CF3; A1 is CH; A2 is CR2b wherein R2b is OH; A3 is CH; R2d and R2e are each H; R3 is cyclohexyl; and Z is N. The compound is understood to be racemic mixture given that stereochemistry is not defined and the previous syntheses of Examples 1, 2 and 33 at Col. 6-8 yield (R,S) mixtures and Col. 30, lines 31-32 states “The other compounds of the invention may be prepared analogously, e.g. as follows:”. The compound therefore reads on Formula II-1 and II-2 of claim 3 because the R and S enantiomers are each necessarily present in the racemic mixture. Accordingly, claims 1, 3, 5, 8 and 10-11 are rejected.
Claims 1, 5, 8, 10 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAPlus Registry Number: RN 581077-03-4. [Database Registry Chemical Abstracts Service, Columbus, Ohio, Accession No. RN 581077-03-4, Entered STN: 08 Sep 2003].
PNG
media_image2.png
599
647
media_image2.png
Greyscale
RN 581077-03-4 is equivalent to DA-044 of claim 14 and is a compound of Formula I of claims 1, 5, 8, 10 and 13 wherein R1 is -C2alkyl-phenyl; A1 is CR2a; A2 is CR2b; A3 is CR2c; R2a and R2c-R2e are each H and R2b is F; R3 is methyl; and Z is N. Accordingly, claims 1, 5, 8, 10 and 13-14 are anticipated by RN 581077-03-4.
Registry number RN 581077-03-4 is available as prior art as of 08 Sep 2003, the day it was indexed into the CAplus database.
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:
PNG
media_image3.png
181
880
media_image3.png
Greyscale
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.
Allowable Subject Matter
Claim 12 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.
Conclusion
Claims 1, 3, 5, 8, 10-11 and 13-14 are rejected.
Claim 12 is objected to.
Claims 2, 4, 6, 15-18 and 27 remain withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JED A KUCHARCZK whose telephone number is (571)270-5206. The examiner can normally be reached Mon-Fri 7:30 to 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan can be reached at (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 published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JED A KUCHARCZK/Examiner, Art Unit 1623
/VALERIE RODRIGUEZ-GARCIA/Primary Examiner, Art Unit 1621
Prosecution Insights