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 .
Claims 1, 53, and 130 have undergone amendments.
A complete search was performed for amended Claim 1, with prior art retrieved (See STN Search, Search Notes).
Claims 1, 2, 5, 10, 36, 37, 41, 53, 69, 77-79, 90, 92-94, 106, 123, 130, 208-209, 211, 216, 219, and 232-233, submitted on 3 December 2025, represent all claims currently under consideration.
Claims 6, 14, 22, 24, 31, 32, 45, 46, 48, 50, 52, 84 and 108 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 April 2025.
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.
Response to Amendment
The 35 U.S.C. § 102(a)(1) rejection of Claims 1, 2, 5, 53, 106, and 208 over Shima (WO 02/055541; Publication Date: 18 July 2002) is withdrawn. Applicant has amended Claim 1 to specify the substituents which can be found on each of the variable groups. Newly amended Claim 1 does not claim that the optional substituent groups can be further substituted, and there is no teaching, suggestion or motivation found within Shima to further remove these substituent groups. These compounds are useful in the treatment of nitric oxide mediated diseases, and there is no indication they would be useful for inhibition of KDM.
The 35 U.S.C. § 102(a)(1) rejection of Claims 1, 2, 53, 77, 106, 208 over Sin (WO 2006/086381; Publication Date: 17 August 2006) is withdrawn. Applicant has amended Claim 1 to specify the substituents which can be found on each of the variable groups. Newly amended Claim 1 does not claim that the optional substituent groups can be further substituted, and there is no teaching, suggestion or motivation found within Sin to further remove these substituent groups. These compounds are useful as inhibitors of NS3 protease encoded by the hepatitis C virus, and there is no indication that they would be useful for inhibition of KDM.
The 35 U.S.C. § 112(d) rejection of Claim 130 is withdrawn. Applicant has amended Claim 53 to delete NRN from the definition of Y1 and optionally substituted from the definition of variable R1.
Claim Rejections - 35 USC § 112(d)- NEW GROUNDS OF REJECTION
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 2 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 2 depends on Claim 1, which claims compounds of structure
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212
483
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, wherein both instances of r are independently 0 or 1 (resulting in a four, five, or six-membered ring). Claim 2 claims 3 specific structures which either have a four-, five-, or six-membered ring, but no other differences from the compound of Formula (I), and thus, Claim 2 does not further limit Claim 1 as the only options for this ring system are as a four-, five-, or six-membered ring system. 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- NEW GROUNDS OF REJECTION
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.
Claims 1, 2, 5, 53, 69, and 106 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Registry No. 1625006-74-7 (Entered STN: 24 September 2014).
STN RN 1625006-74-7
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140
285
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has n as 1 with R1 as -NO2, Y1 as -NH-, one instance of r as 0 and one as 1 (five-membered ring), R3 as hydrogen, L1 as C2 alkylene, the first instance of Y2 as -NH-, the second instance of Y2 as bond, L2 as bond, and R2 as unsubstituted adamantane (carbocyclic group).
Claims 1, 2, 53, and 106 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Registry No. 1625055-06-2 (Entered STN: 24 September 2014).
STN Registry No. 1625055-06-2
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138
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has n as 1 with R1 as -NO2, Y1 as -NH-, one instance of r as 0 and one as 1 (five-membered ring), R3 as hydrogen, L1 as unsubstituted phenyl (arylene), the first instance of Y2 as -NH-, the second instance of Y2 as bond, L2 as bond, and R2 as furan (heteroaryl).
Allowable Subject Matter
Claims 10, 36, 37, 41, 77-79, 90, 92-94, 123, 130, 208-209, 211, 216, 219, and 232-233 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 an examiner’s statement of reasons for allowance: A search of the prior art retrieved no compounds which anticipate or render the compounds of Claim 130 obvious, and the compounds of Claims 10, 36, 37, 41, 77-79, 90, and 92-94 have not been disclosed in the prior art. The compounds which were cited in the previous Office Actions represent the closest prior art. The compounds cited in the above rejections are not used as inhibitors of KDM, nor do they have any demonstrated biological activity.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Claims 1, 2, 5, 53, 69, and 106 are rejected.
Claims 10, 36, 37, 41, 77-79, 90, 92-94, 123, 130, 208-209, 211, 216, 219, and 232-233 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILLIP MATTHEW RZECZYCKI whose telephone number is (703)756-5326. The examiner can normally be reached Monday Thru Friday 730AM-5PM EST.
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/P.M.R./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625