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 .
Claim Status
Claims 28-53 are pending. Claims 43-44 and 47-53 are withdrawn. Claims 28-37, 39-42 and 46 are rejected. Claims 38 and 45 are objected to.
Response to Amendment/Arguments
Applicant’s amendments have overcome the previously presented rejections.
Election/Restrictions
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicant’s elected species appears free of the art. Therefore, according to MPEP 803.02: should the elected species be found allowable, the examination of the Markus-type claim will be extended. If the examination is extended and a non-elected species found not allowable, the Markush-type claim shall be rejected and claims to the non-elected invention held withdrawn from further consideration. Claims 38 and 45 appear to be free of the art. The examination of the Markush-type claims has been extended to include the scope of claims 38 and 45 as well as the scope of claims 28-37, 39-42 and 46 where the compound is one of the following:
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these species of which are anticipated and not allowable under 35 USC § 102.
As a non-elected species has been found not allowable, the Markush-type claims have been rejected and the claims to the nonelected invention are held withdrawn from further consideration. Examination has been limited to claims embracing the elected species which are claims 28-42 and 45-46. Claims 28-42 and 45-46 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since the nonelected species has not been found allowable, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Claims 43-44 and 47–53 remain withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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(s) 28-32, 34-37, 39-41, and 46 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO 2019/234243 A1 by Molette.
The prior art discloses the following compound on page 57:
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The prior art compound is embraced by instant formula (I) and reads on claims 28-32, 34-37, 39-41, and 46 where A has formula (IA), W is S, X is N, A1 and A4 are CH, A2 is CR2, R2 is halogen, A3 is N, each of B1-B3 is CH, and Z is
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where R1A is OH and R1C is hydrogen.
Regarding instant claim 35 which further defines R3, the claim does not require that the compound possess CR3, therefore the prior art compound is anticipatory.
Regarding instant claim 46, the prior art discloses a composition comprising the prior art compound and an excipient (page 7).
Claims 28-29, 31-37, 39-42, and 46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1207531-56-3, which entered Registry on March 1st, 2010.
CAS Registry No. 1207531-56-3 is drawn to rel-3-(2-Benzofuranyl)-6-[(2R,5S)-2,5-dimethyl-1-pyrrolidinyl]pyridazine, which has the following structure:
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The compound above is embraced by instant formula (I) and reads on claims 28-29, 31-37, 39-42, and 46 where A has formula (IA), W is O, X is CH, A1-A4 are each CH, B1 and B2 are CH, B3 is N, and Z is
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where R1A and R1C are each C1 alkyl.
Regarding instant claims 35, 41, and 42 which further define R2 and R3, the claims do not require that the compound possess CR2 or CR3, therefore the prior art compound is anticipatory.
Regarding instant claim 46, which is drawn to a pharmaceutical composition comprising the compound and a pharmaceutically acceptable carrier, the CAS Registry entry includes predicted properties including mass and molar solubilities at varying pH values. MPEP 2131.02 states:
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015)
In this situation, a person having ordinary skill in the art in viewing the properties of the Registry entry would envisage a composition with the compound and water, which is a pharmaceutically acceptable carrier.
Allowable Subject Matter
Claims 38 and 45 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.
Conclusion
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 ASHLI A CHICKS whose telephone number is (571)270-0582. The examiner can normally be reached M-Th 7 a.m.- 5 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H Alstrum-Acevedo can be reached at (571)272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.C./Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626