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 .
Response to Remarks and Amendments
Applicant’s reply filed October 1, 2025 has been entered. All rejections and objections not explicitly maintained herein are withdrawn.
In particular, the rejections under 35 USC 102(a)(1) are withdrawn in view of Applicant’s amendments to eliminate C(=O) as a definition for L1 in the instant claims. Since the prior art compounds all require a carbonyl group at this position, the art no longer anticipates the instant claims.
Restrictions/Elections
In accordance with the MPEP, 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 (see MPEP 803.02). 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 not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
As indicated in the previous action, the examiner searched the compound based on the elected species and expanded scope, no prior art was found which anticipates the elected species. Thus the search was extended or broadened pursuant to MPEP 803.02 to include the compounds described in the rejections set forth in the previous action. In view of the claim amendment, the scope of search and consideration is again expanded in accordance with MPEP 803.02 to include the compound
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, which is encompassed by newly added claim 81.
Status of Claims
Currently, claims 1, 7-8, 11, 14-16, 21-23, 25, 29, 38, 73 and 76-81 are pending in the instant application. Claims 38, 73 and 76-78 remain withdrawn from consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention and/or species.
Claims 1, 7-8, 11, 14-16, 21-23, 25, 29 and 79-81 read on an elected invention and/or elected species/extended scope and therefore remain under consideration to the extent that the read on the elected embodiment and extended scope. It has been determined that the entire scope claimed is not patentable.
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.
It is noted that with respect to the rejection below, for the purposes of determining if a reference is a “printed publication” for the purposes of 102(a)(1), MPEP 2128 states the following:
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Specifically regarding electronic publications, such as online databases, as prior art the following is noted:
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where “prior art disclosures…on an on-line database are considered to be publicly available as of the date the item was publicly posted.” Since the database entries below list the dates that the compounds were entered into the on-line database, the compounds were made publicly available as of those dates in the citation, and the claims are anticipated.
Claim(s) 81 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the STN Registry database entry for CAS RN 916418-15-0, which has an entry date of 28 December 2006.
Since the entry date represents the date that the compound entered a publicly available database on STN, this represents the date that each compound was made accessible to the public.
The STN Registry database entry listed above discloses the compound
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which reads on the formula (I) where X is S; A1 is -C(R7)(R8) where R7 and R8 are each H; A2 is absent; one of R3 and R4 is H and the other is -CO2R7 where R7 is H-; L1 is a bond; R1 is phenyl; L2 is a methylene; R2 is naphthyl; Z is =C(R13)- where R13 is NH2; and Y is O. Since the compound disclosed in the prior art has the same structure as the instantly claimed compound, each and every required element of the claim is taught and the claim is anticipated. Accordingly, the claim is anticipated.
Conclusion
Claims 1, 7-8, 11, 14-16, 21-23, 25, 29 and 79-80 are allowed
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alicia L. Otton whose telephone number is (571)270-7683. The examiner can normally be reached on Monday - Thursday, 8:00-6:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Fereydoun Sajjadi can be reached on 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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 extension fee 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 date of this final action.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALICIA L OTTON/Primary Examiner, Art Unit 1699