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 17/773,414
Claims 1-7, 9-22, and 27-52 are currently pending.
Priority
Instant application 17/773,414, filed 4/29/2022, claims priority as follows:
PNG
media_image1.png
87
356
media_image1.png
Greyscale
The priority documents 62/931,186, 62/931,576, and 63/046,481 contain support for the claims of the instant application. Therefore, the instant claims are entitled to the priority date of 11/05/2019.
Information Disclosure Statement
All references from the IDS’s filed on 7/15/2022, 10/02/2024, 12/17/2024, and 5/1/2025 have been considered unless marked with a strikethrough.
Response to Arguments/Amendments
The amendment filed 12/23/2025 has been entered. Claims 1 and 27-33 are currently amended. Claim 23 has been cancelled.
In the Non-Final dated 10/16/2025, claims 1-3, 7, 9-18, 21, and 23 were rejected under 35 U.S.C. 112(b). In response, Applicant has amended claim 1 which overcomes the rejection. The rejection is withdrawn.
Claims 1-3, 7, 9, 12, 15-16, 21, and 23 were rejected under 35 U.S.C. 102(a)(1) in the Non-Final Rejection dated 10/16/2025. In response, Applicant has amended the claims to require that R1 must be C1-C6 alkyl, and that R2 must be substituted with 1 to 3 R20 groups which overcomes the rejection. Thus, the rejection is withdrawn.
Claims 10-11, 13-14, and 18 were rejected under 35 U.S.C. 103 in the Non-Final dated 10/16/2025. Upon the amendment to the claims as stated above, the rejection has been overcome and is withdrawn.
However, Applicant’s amendment to claim 1 has necessitated the new ground(s) of rejection presented in this Office Action.
Election/Restriction
Applicants’ election of Group I (claims 1-33) with traverse in the reply filed on 12/17/2024 is acknowledged. The traversal is on the grounds that the application can be searched without serious burden and that a search of all claims of the instant application would not be unduly burdensome. This argument is not found persuasive because the instant application was filed under 35 U.S.C. 371 and is therefore subject to unity of invention analysis. Groups I and II, as defined in the Restriction/Election Requirement of 11/19/2024, require the special technical feature of a compound of Formula (I). However, compounds of Formula (I) are known in the art. See the 102 rejection in previous office actions and below. Thus, the restriction requirement is still deemed proper and is therefore made FINAL.
With respect to the species election, the election of Compound E11:
PNG
media_image2.png
345
931
media_image2.png
Greyscale
Without traverse in the reply filed 12/17/2024 is 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 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.
The elected species was searched and no applicable prior art was identified. In the Non-Final dated 2/5/2025, the Examiner expanded her search to compounds of Formula (I):
PNG
media_image3.png
155
258
media_image3.png
Greyscale
where R4 and R5 are H, n is 1, and G1 is an optionally substituted C6 aryl group. Upon the amendments to the claims 1 and 33, and cancellation of claims 8, 24, and 26, submitted 5/1/2025, the 35 U.S.C. 102 rejections set forth in the 2/5/2025 Non-Final were overcome. The Examiner then moved onto alternative species recited in the instant claims. Examination in the Final dated 5/19/2025 was based on compounds of Formula (I) where R4 and R5 are H, n is 1, G1 is an optionally substituted C6 aryl group, and variables k, q, and m are all 1. In response, Applicant amended claim 1 to omit the limitation of allowing R1 and R2 to be C3-6 cycloalkyl to overcome the rejection. Examination in the Non-Final dated 10/16/2025 was expanded to include compounds of Formula I where R2 is a C1 alkyl group, k, q, and m are all 1, R4 and R5 are H, n is 1, and G1 is an optionally substituted C6 aryl group. In response, Applicant amended the claims to recite R2 must be substituted. Thus, subsequent examination in the present Office Action is based on compounds of Formula I where R2 is a C1 alkyl group substituted with one R20 group, where the R20 group is a 6 membered heterocycloalkyl, k, q, and m are all 1, R4 and R5 are H, n is 1, and G1 is an optionally substituted C6 aryl group. Claims 1-3, 7, 9, 15-18, 21, 27, 29, and 31 read on the expanded species. Claims 4-6, 10-14, 19-20, 22, 28, 30, and 32-52 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species and/or group, there being no allowable or generic linking claim.
NEW REJECTIONS NECESSITATED BY AMENDMENT
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.
Claims 1-3, 7, 9, 15-18, 21, 27, 29, and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ACS (American Chemical Society. Chemical Abstract Service. RN 1957160-15-4, Entered into STN 21 JUL 2016). This rejection applies to the expanded species.
The reference ACS teaches the following compound:
PNG
media_image4.png
364
606
media_image4.png
Greyscale
Which anticipates a compound of instant Formula I:
PNG
media_image3.png
155
258
media_image3.png
Greyscale
When G2 is
PNG
media_image5.png
151
245
media_image5.png
Greyscale
, R2 is a C1 alkyl group substituted with one R20 group, where the R20 group is a 6 membered heterocycloalkyl, k, q, and m are all 1, R1 is C1 alkyl, R3 is C1 alkyl, R4 and R5 are H, n is 1, and G1 is a C6 aryl group substituted with one fluorine in the 3-position. Thus, ACS anticipates instant claims 1-3, 7, 9, 15-18, 21, 27, 29, and 31.
Conclusion
Claims 1-3, 7, 9, 15-18, 21, 27, 29, and 31 are rejected. Claims 4-6, 10-14, 19-20, 22, 28, 30, and 32-52 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.
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.
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, Clinton Brooks can be reached at 571-270-7682. 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.
/K.N.H./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621