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 .
Election/Restrictions
Applicant’s election with traverse of Group I (drawn to a compound/pharmaceutical
composition) in the reply filed on 03/19/2025 is acknowledged.
Claims 1, 3-6, 11-12, 15-24 are pending of which claim 15-19, 21-24 in Group II, is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected INVENTION, there being no allowable generic or linking claim. The restriction requirement is still deemed proper and is made Final.
Pending claims 1, 3-6, 11-12 and 20 have been examined on the merits.
Please note, for clarity of the record, Applicant ’s election of compound ETP-47037
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Please also note in the interest of compact prosecution, that during the course of examination any prior art identified that relates to non-elected subject matter is applied to demonstrate the non-allowability of the generic claims and/or as discussed below.
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.
(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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Number 2224237-28-7 (20 May 2018).
CAS RN 2224268-91-9 discloses the following compound as part of a chemical library on or about 20 May 2018.
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This compound meets each and every chemical structure variable as listed in the
instant claims, wherein R1 is
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substituted with a methyl group; R2 is hydrogen; and A is
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; Z is
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. The compound disclosed also anticipates the claimed composition.
Therefore, claim 1 is anticipated.
Claim Objections
Claims 3-6, 11-12 and 20 are objected to for depending from a rejected base claim.
Subject Matter Free of the Art of Record
The subject matter of claims 3-6, 11-12, and 20 are free of the art of record. The closest prior art are the CAS abstracts. While CAS RN 2224268-91-9 teaches a compound of formula I, there is no motivation for a person of ordinary skill in the art to modify the teaching of CAS RN 2224268-91-9 to arrive at the claimed compound. These claims are not allowable until the objection is overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PIERRE PAUL ELENISTE whose telephone number is (571)270-0589. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm (EST).
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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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/P.P.E./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622