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 .
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.
Election/Restrictions
Applicants’ claim amendments render moot the prior art rejection of record.
Examiner extended the Markush search to the species:
PNG
media_image1.png
166
528
media_image1.png
Greyscale
of genus formula I of instant claim 1, wherein: X1 is C-R2 and wherein R2 is hydrogen (H); X2 and X3 are each N; R1, R3, and R4 are each hydrogen (H); Ro is -NRaC(O)R6, wherein Ra is H; R6 is C5heteroaryl; R5 is -NRbC(O)R7 , wherein Rb is H; and R7 is C9heteroaryl (also could be a C9fused heterobicyclic group).
This extended Markush search retrieved prior art.
Therefore, per Markush search practice, the Markush search will not be extended unnecessarily to additional species in this Office Action.
The Markush search reads on claims 1, 5, 10, 12-14, and 17.
Claims 2-3 and 6-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 June 2025.
Current Status of 17/794,390
This Office Action is responsive to the amended claims of 13 October 2025.
Claims 1, 5, 10, 12-14, and 17 have been examined on the merits. Claims 1 and 5 are currently amended. Claim 10 is rejoined for this current Markush search extension, above. Claims 12-14 and 17 are previously presented.
Priority
The effective filing date is 21 January 2021.
Response to Arguments
The Examiner acknowledges receipt of and has reviewed Applicants’ claim amendments and Reply of 13 October 2025.
Applicants’ amendments to instant claim 1 render moot the prior art rejection of record (see paragraphs 16-17 of the previous Office Action).
Response to Amendment
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.
Claim 10 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The rejoined claim 10 contains “including reduction, oxidation and reductive amination”. The word “including” renders the metes and bounds of claim 10 undefined (hence rendering claim 10 indefinite) since the artisan is not certain if the limitations following “including” are merely exemplary or are required limitations of the claim.
Please delete “including” to render moot this rejection.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
ACS (American Chemical Society. Chemical Abstract Service. RN 1681039-18-8. Entered into STN: 10 April 2015).
The prior art reference ACS teaches the compound:
PNG
media_image1.png
166
528
media_image1.png
Greyscale
(see enclosed ACS reference), which is a species/compound of genus formula I from claim 1, wherein: X1 is C-R2 and wherein R2 is hydrogen (H); X2 and X3 are each N; R1, R3, and R4 are each hydrogen (H); Ro is -NRaC(O)R6, wherein Ra is H; R6 is C5heteroaryl; R5 is -NRbC(O)R7, wherein Rb is H; and R7 is C9heteroaryl (also could be a C9fused heterobicyclic group). This anticipates instant claim 1.
This is properly made FINAL due to Applicants’ claim amendments.
Conclusion
Claims 12-14 and 17 are objected to as being dependent upon a rejected base claim. These claims may be rejected in a future Office Action when the Markush search has been extended.
The embodiment wherein X1 is N; X2 is CH; and X3 is CH is free of the prior art.
Therefore, claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 1 and 10 are not presently allowable as written.
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 JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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, Andrew D Kosar can be reached at (571) 272-0913. 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.
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625