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 Claims
Claims 2-7, 9, and 11-20 are pending in the instant application. Claims 6, 7, 10, and 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 2-5, 9, and 11-14 is contained herein. The scope of claim 2 has been extended to cover species wherein R1 = phenyl and Ar1,2 is a carbocyclic or heteroaryl ring.
Priority
Applicant’s submission of the appropriate English translated foreign priority documents, see Remarks, filed 11/6/2025, with respect to the Non-Final Office Action mailed 8/21/2025, has been fully considered. Thus, the instant application receives foreign priority date to said document.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 8/21/2025 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 11/6/2025.
New Objections and Rejections
Claim Objections
Claim 9 is objected to because the instant claims possess non-elected subject matter. Applicant elected group I without traverse, drawn to compounds of the general formula I. However as stated in the previous office action, the claim embrace species not represented by the originally presented subject matter. For example the species starting at B1 are not symmetrical wherein n = 2:
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Applicants mentioned that these compounds meet the limitation wherein n =1 and Ar2 is arylamine. It is unclear how these species could be interpreted by the latter since arylamino is viewed in the art as (aryl-NH2). Even if trying to construe the latter, the amino groups are further substituted (e.g. -NR2) which is further substituted with heteroaryl which again is not supported the originally presented subject matter. There is no guidance in the specification as to the actual definitions of these groups and the art differs in their language as well. Thus the examiner has to use the most reasonable interpretation where these species are not embraced by the formula I presented initially. Even the following species do not fall within the scope of formula I:
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wherein R1 = aryl, Ar1 or B selected from aryl or aryl substituted with heteroaryl which is not supported by the originally presented claim 1. The examiner objects to these species that appear to not be embraced by the originally presented formula I and that all should be removed. Correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 11 and 13 are 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 pre-AIA the applicant regards as the invention.
In the instant claims, the scope of “X1,X2,X3 and X4” is not incorporated into the formula II and it is unclear what these variables are referring to. Does Applicant intend
“X1, etc.”? Thus the scope of the claims are indefinite. Correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5, 11, and 13-14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 does not limit claim 2 with respect to Ar2 being selected from formula III as written. The latter formula suggests that R1 may be selected from arylene or broader C2-C28 heteroarylene which again is substituted further with the fused imidazolyl ring system; neither of the aforementioned is a possibility since claim 2 does not embrace these limitations. Additionally claims 11 and 13 recite variables “X1,X2,X3 and X4” which are not incorporated into the formula II recited in claim 2.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2-4 and 11-14 are rejected under 35 U.S.C. 103(a) as being unpatentable over US Patent 8,853,403.
The instant claims may be drawn to the following compound:
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wherein for formula II, X1-4 is -CH, R2 = phenyl, R1 = Ar1 = phenyl, and Ar2 = heteroaryl substituted with phenyl.
US Patent 8,853,403 teaches the following compound at col. 99, example 3:
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wherein for formula II, X1-4 is -CH, R2 = H, R1 = Ar1 = phenyl, and Ar2 = heteroaryl substituted with phenyl.
Note that the difference between these compounds stem from an extra phenyl group at variable R2 in the claimed compound. However the patent teaches that the two groups (H and phenyl) are equivalent and interchangeable (see col. 4, li.10-15 for variable R51 wherein group A represents the imidazopyridine S1-1 at col. 3, line 50):
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Thus the claimed species would have been considered obvious. Applicants are to be aware of other species in this document as well which may render the claims obvious.
Conclusion
Claims 2-5 and 11-14 are rejected. Claim 9 is objected to.
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 BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624