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
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/20/2026 has been entered.
Status of 17/773,414
Claims 1-7, 9-22, 27-30, and 32-52 are currently pending.
Priority
Instant application 17/773,414, filed 4/29/2022, claims priority as follows:
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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 5/20/2026 has been entered. Claims 1 and 33 have been amended. Claim 31 has been cancelled.
In the Final dated 3/20/2026, claims 1-3, 7, 9, 15-18, 21, 27, 29, and 31 were rejected under 35 U.S.C. 102(a)(1). In response, Applicant has amended instant claim 1 to omit the limitation where R20 can be a 5-10 member heterocycloalkyl and has cancelled claim 31, which overcomes the rejection. Thus, the rejection has been withdrawn.
However, Applicant’s amendments have 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:
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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):
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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. Examination in the Office Action dated 3/20/2026 was 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. In response, Applicant has amended instant claim 1 to omit the limitation where R20 is a 5-10 member heterocycloalkyl. Subsequent examination in the present Office Action is based on the same expanded species of the previous rejection, but with the difference where R2 is a C3 alkyl substituted with one R20, where R20 is a hydroxy. Claims 1-3, 7, 9, 15-18, 21, and 27-28, read on the expanded species. Claims 4-6, 10-14, 19-20, 22, 29-30, 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, and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ACS (American Chemical Society. Chemical Abstract Service. RN 2059876-46-7, Entered into STN 26 JAN 2017). This rejection applies to the expanded species.
The reference ACS teaches the following compound:
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Which anticipates a compound of instant Formula I:
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When G2 is
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, R2 is a C3 alkyl group substituted with one R20 group, where the R20 group is a hydroxy, k, q, and m are all 1, R1 is C1 alkyl, R3 is H, 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, and 28.
Conclusion
Claims 1-3, 7, 9, 15-18, 21, 27, and 28 are rejected. Claims 4-6, 10-14, 19-20, 22, 29-30, and 32-52 are withdrawn.
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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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.
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/K.N.H./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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