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 Arguments
Applicant’s arguments, see pp. 9-10, filed 08/04/2025, with respect to the objection to claims 1 and 3 and the rejection of claim 14 under 35 U.S.C. 112(d) have been fully considered and are persuasive. Amendments moot the objection(s)/rejection(s). The objection(s)/rejection(s) of 04/10/2025 have been withdrawn.
Applicant’s arguments, see pp. 10-12, filed 08/04/2025, with respect to the rejections of claims 12-13 as anticipated under 35 U.S.C. 102 over Schnorrenberg and claims 1, 5 and 7-14 as anticipated under 35 U.S.C. 102 over RN 603941-95-3 have been fully considered and are persuasive. Amendments moot the rejections. The rejections of 04/10/2025 have been withdrawn. Note however that R3 in formula II can be cyclohexyl when R3 is
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. and therefore Schnorrenberg still anticipates claims 1, 3, 5 and 7-11 for this reason. Updated rejections to address claim amendments are presented below. Note the claims have only been search 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.
Claim 1, 3, 5 and 7-11 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
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(Example 1, Col. 6-7) which is a compound of Formula II of claims 1, 5 and 7-11 wherein R1 is -CH2-phenyl wherein the phenyl is substituted with two CF3; A1 is CR2a; A2 is CR2b; A3 is CR2c; R2a-R2e are each H; R3 is cyclohexyl; and Z is N. The compound is a racemic mixture with both the R and S enantiomer present (“(R,S)…”, Col. 7) and the compound therefore reads on Formula II-1 and II-2 of claim 3 which encompasses the R and S enantiomers. Accordingly, claims 1, 3, 5 and 7-11 are rejected.
Claims 1, 3, 5 and 7-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mazzone
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The compound V(b) is a compound of Formula II of claims 1, 3, 5 and 7-13 wherein R1 is substituted thiadiadzolyl; A1 is CR2a; A2 is CR2b; A3 is CR2c; R2a-R2e are each H; R3 is methyl; and Z is N. A PHOSITA recognizes that a mixture of enantiomers is obtained according to the synthetic method and therefore the stereoisomer of claim 3 is encompassed. Accordingly, claims 1, 3, 5 and 7-13 are anticipated by Mazzone et al.
Claims 1, 5, 7-10 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAPlus Registry Number: RN 517894-99-4. [Database Registry Chemical Abstracts Service, Columbus, Ohio, Accession No. RN 517894-99-4, Entered STN: 19 May 2003].
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RN 517894-99-4 is equivalent to DA-043 of claim 14 and is a compound of Formula I of claims 1, 5 and 7-13 wherein R1 is -C2alkyl-phenyl; A1 is CR2a; A2 is CR2b; A3 is CR2c; R2a and R2c-R2e are each H and R2b is OMe; R3 is methyl; and Z is N. Accordingly, claims 1, 5, 7-10 and 13-14 are anticipated by RN 517894-99-4.
Registry number RN 517894-99-4 is available as prior art as of 19 May 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:
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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
Claims 1, 3, 5 and 7-14 are rejected.
Claims 2, 4, 6, 15-18 and 27 are withdrawn.
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.
Correspondence
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.
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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.
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/JED A KUCHARCZK/Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623