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 1,11,13,18,38,47,56,61,66,78-80,83,87, and 91-93 are pending.
Claims 47,56, 66,80,83,87, and 92 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 1,11,13,18,38,61,78-79,91 and 93 is contained herein.
Information Disclosure Statement
The examiner has considered the information disclosure statement filed most recently of record.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 10/21/2025 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 1/8/2026.
Status of Rejections
35 USC § 112 (d)
The rejection of claims 78-79 is maintained.
Applicant’s arguments, see Remarks, filed 1/8/2026, with respect to the rejection set forth in the Non-Final Office Action mailed 10/21/2025, have been fully considered but are not found persuasive.
To reiterate the rejection of record, claims 78-79 do not further limit claim 1 with respect to species bearing the following moiety for variable R1 wherein the group bears a heterocycle:
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since claim 1 already sets forth that the variable must have a phenyl group.
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.
Applicants argue that one skilled in the art recognizes that the group is a phenyl ring substituted with a methylenedioxy functional group which satisfies the definition of the claim wherein variable Y is alkoxy. The examiner respectfully disagrees. Claim 1 as written states that the phenyl group may be substituted with variable Y wherein Y may be selected from C1-C6alkoxy. The claims do not recite that two adjacent Y substituents may further form additional ring systems which falls under the scope of a methylenedioxy group. Thus, based on the most reasonable definition of the claims, the phenyl group described for variable R1 cannot be further fused to form additional ring systems and the rejection is maintained.
New Rejections
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.
Claims 1,11,13,18,38, 61, 78, 91, and 93 are rejected under 35 U.S.C. 102(a)(1) as being anticipated over
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in STNext.
STNext teach the following compound information:
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wherein n = 1, Y = chloro, and R2 = C3alkylOH. Thus the claims are anticipated.
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 1,11,13,18,38,61,78-79,91, and 93 are rejected under 35 U.S.C. 103(a) as being unpatentable over over
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in STNext.
The instant claims may be drawn to the compound above described as
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with the exception that the chloro group is replaced with a fluoro group. STN taught the compound described above. However a fluoro group and a chloro group are recognized in the art as halogens since they are part of the same group in the periodic table. Thus since they are both considered halogens the skilled artisan would have considered the two interchangeable and the resulting compounds obvious.
Conclusion
No claims are allowed.
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.
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.
/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624