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 Amendment
The amendment filed 2025 December 1 containing newly amended claims 24-30, withdrawn claims 32-35, and newly added claims 50 and 51 is acknowledged. The objections of claim 24-30 are overcome because variable Z is uppercase in the formula and body of claim 24 and each compound of claim 30 is on its own line. The 35 U.S.C. 112 (b) rejection is overcome because the “for example language” is no longer present in claim 24 and an acyl group is a broad group rather than an indefinite group. An acyl group is simply a C(O) group attached to any other group than OH. The 35 U.S.C. 102 rejections are overcome due to examined variable R5 no longer being an aryl or substituted aryl group.
Claims 32-35 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2025 May 12.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2025 December 1 was submitted in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 24-26, 50, and 51 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SALA (Bioorganic & Medicinal Chemistry, 2010, 18, 4374-4384). Sala describes several compounds: 5-18 (page 4375); 21 (page 4376, table 3); 8b and 22 (page 4376); 30 and 32 (page 4376, scheme 3); 31-40 (page 4377, scheme 4); 41 and 42 (page 4377, scheme 5); and 45 and 46 (page 4376, scheme 6).
PNG
media_image1.png
108
346
media_image1.png
Greyscale
In these compounds, the following examined definitions apply: R3 is Cl; R4 is H; and Z is an unsubstituted or substituted cycloalkyl group. Compounds 5 and 6 are representative examples of the other compounds present relied upon for the rejection.
Claim(s) 24-26, 50, and 51 is/are rejected 35 U.S.C. 102(a)(1) as being anticipated by TROST (Journal of the American Chemical Society , 2000, 122, 5947-5956). Sala describes several compounds: 21a-c (page 5950, scheme 3); 26, 28, 34, and 31b (page 5951, scheme 4); 29-31, 32a, 33a (page 5951, scheme 5); 37-39 (page 5952, scheme 7); 40-53 (page 5952, scheme 8); and 55, 56, and 58-62 (page 5953, scheme 9).
PNG
media_image2.png
422
386
media_image2.png
Greyscale
In these compounds, the following examined definitions apply: R3 is Cl; R4 is H; and Z is an unsubstituted or substituted cycopentyl group. Compounds 21a-c are representative examples of the other compounds present relied upon for the rejection.
Allowable Subject Matter
Claims 24-26, 50, and 51 are not allowed.
Claims 27-30 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.
The following is a statement of reasons for the indication of allowable subject matter: SALA (Bioorganic & Medicinal Chemistry, 2010, 18, 4374-4384) does not describe compounds in which examined variable R4 is a halogen. .
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 NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
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, Fereydoun Sajjadi can be reached at 571-272-3311. 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.
/NOBLE E JARRELL/Primary Examiner, Art Unit 1699