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 .
DETAILED ACTION
Status of 17/760,472
Claims 1-10 and 13-15 are currently pending.
Priority
Instant application 17/760,472, filed 8/10/2022, claims priority as follows:
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The translated foreign priority document contains support for the instant claims, and thus claims 1-10 and 13-15 are granted the effective filing date of 2/28/2020.
Information Disclosure Statement
All references from the IDS submitted on 8/10/2022 have been considered unless marked with a strikethrough.
Response to Applicants Arguments/Amendments
The amendment entered 9/30/2025 has been entered. Claim 10 has been amended. Claims 11 and 12 have been cancelled.
In the Non-Final dated 7/3/2025, the drawings were objected to for pixelated and illegible images. In response, Applicant has submitted a replacement sheet with a clearer drawing of Fig. 1 to overcome the objection. Thus, the objection is withdrawn.
Claims 11 and 12 were rejected in the Non-Final dated 7/3/2025 under 35 U.S.C. 112(d). In response, Applicant has cancelled claims 11 and 12 to overcome and withdraw the rejection.
Claims 1-3 and 9-12 were rejected under 35 U.S.C. 102(a)(1) in the Non-Final dated 7/3/2025. Upon submission of the translated foreign priority documents, the rejection has been overcome and withdrawn.
In the Non-Final of 7/3/2025, claims 1 and 10-12 were rejected under 35 U.S.C. 103. In response, Applicant has submitted the translated foreign priority documents to overcome the rejection. Thus, the rejection is withdrawn.
Election/Restriction
Applicant’s election of Group I, claims 1-12, drawn to compounds and compositions of Formula (I), without traverse in the reply filed 6/17/2025 is acknowledged. Applicant’s election of Example 3, Compound 16c:
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in the reply filed 6/17/2025, without traverse, is also acknowledged.
Examination will begin with the elected species. In accordance with MPEP § 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the non- elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be examined again. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during further examination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final.
In the Non-Final dated 7/3/2025, the elected species was searched and prior art was identified. In response, Applicant submitted the translated foreign priority document to overcome the 102 and 103 rejections. Thus, the search in this Office Action has been expanded to the full scope of instant Chemical Formula 1 and no prior art was recognized. However, a 112(b) rejection was identified, and thus, claims 1-10 are the subject of this Office Action. Claims 13-15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species and/or group, there being no allowable generic or linking claim. The Examiner notes the withdrawn claims are not in condition for allowance; there is a 112(a) enablement issue with the limitation “preventing” in claim 13.
Claim Interpretation
Claim 10 recites a pharmaceutical composition for preventing or treating a degenerative brain disease, comprising the compound or pharmaceutically acceptable salt thereof according to claim 1 as an active ingredient. However, the phrase, “for preventing or treating a degenerative brain disease” is intended use of the pharmaceutical composition and is not what the composition is, but rather what it does. Thus, the intended use of the pharmaceutical composition is not granted patentable weight and the claim is currently being interpreted as the pharmaceutical composition comprising the compound or pharmaceutically acceptable salt thereof according to claim 1.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites the limitation, “Z is a carbon or oxygen atom”, in reference to Chemical Formula 7. However, claim 7 does not recite the variable Z elsewhere, such as in ring
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for the variable Ar of Chemical Formula 1, and thus the limitation is not needed in this claim. Appropriate correction is required.
Close Prior Art Not Cited
Close prior art identified is Industry-University Cooperation Foundation Hanyang University Erica Campus (US 2020/0039959 A1, herein after “Hanyang”), which is drawn to benzimidazole derivatives with C-Jun N-terminal Kinase 3 (JNK3) inhibitory activity. Hanyang teaches compounds such as 25a, 25g, and 26e (pages 54, 56, and 58, respectively):
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which partially map to instant Chemical Formula 1:
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When Ar is
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, or napthalenyl, where R3 and R4 are each independently a halogen atom and Z is a carbon atom, and R2 is
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, where m is 3 and n is 1. The compounds are disclosed as in 100% DMSO, generating a pharmaceutical composition (page 66, para [0434]), and compound 26e was found to be active in JNK3 IC50 assays (page 69, Table 2). Furthermore, the compounds of Hanyang are also disclosed in methods of treating a degenerative neurological disease such as Alzheimer’s disease (abstract and page 70, para [0437]).
The difference between compounds of Hanyang and the instant claims is the presence of an aryl ring of the Hanyang compounds to generate the benzimidazole core. In the instant claims, the aryl ring is replaced by a pyrrolidine to construct a pyrroloimidazole. There is no teaching, suggestion, or motivation in Hanyang, or in combination with the prior art, to replace the aryl ring of Hanyang with the pyrrolidine of the instant claims to generate compounds of instant Chemical Formula 1.
Allowable Subject Matter
Claims 1-6 and 8-10 are allowed.
Conclusion
Claim 7 is rejected. Claims 1-6 and 8-10 are allowed. Claims 13-15 remain withdrawn.
THIS ACTION IS MADE FINAL. 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 Kendall Heitmeier whose telephone number is (703)756-1555. The examiner can normally be reached Monday-Friday 8:30AM-5:00PM ET.
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/K.N.H./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621