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 the Claims
Claims 1-10 and 12-23 are pending. Claims 12-15 and 18-23 are withdrawn. Claims 1-9 and 16-17 are rejected. Claim 10 is allowed.
Election/Restrictions
Claims 1-7 and 16-17 read on Applicant’s species election of compound 420. Examination of the elected invention was conducted in accordance with the MPEP 803.02.
The previous Office Action dated 12/15/2025 incorrectly stated: “The elected species, formula I(h) of claim 1, and formula (I) of claim 4 are allowable in view of the prior art”, however, prior art that anticipates Formula (I) of claim 4 has since been identified and is discussed herein. Previously withdrawn claims 8-10 were therefore prematurely examined. In the interest of advancing prosecution, these claims remain under examination. The scope of the search has been limited to the entire scope of formula I(h) of claim 1, the entire scope of formula I(f) of claim 10, claim 5, and formula (I) of claim 4:
as applied to claims 6-9;
alternative 4 beginning on page 18 of the claims, which is free of the prior art;
alternative 5 beginning on page 22 of the claims wherein X2, X3, X4 and X10 are each CH; X5, X6, X7, X8 and X9 are each C; R5 and R6 join to form a substituted 6-membered heterocyclic ring; R7 is C1 alkoxy; and R7’ are H; and
alternative 2 beginning on page 12 of the claims wherein X2, X3, X4 and X10 are each CH; X5, X6, X7, X8 and X9 are each C; R5 is H; R6 is substituted (CH2)3-pyrrolidine; R7 is C2 alkoxy; and R7’ are H.
Since art was found on a nonelected species, subject matter not embraced by the non-elected species is therefore withdrawn from further consideration. Claims 12-15 and 18-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statement(s) (IDS) dated 03/11/2026 has been considered.
Response to Amendment/Arguments
The amendment filed 03/11/2026 is compliant with the requirements of 37 CFR 1.121(c), accordingly the amendment has been entered. Applicant’s arguments have been fully considered and are addressed below:
35 USC § 102 Rejection
The rejection of claim 10 under 35 USC 102 for being anticipated by Al-Tel et al. “Rapid Assembly of Polyfunctional Structures Using a One-Pot Five- and Six-Component Sequential Groebke-Blackburn/Ugi/Passerini Process” Eur. J. Org. Chem. 2010, 5586-5593 has been overcome by the amendments to said claim. The rejection has been withdrawn.
Double Patenting Rejection
The rejections of claim 1-9 and 16-17 for nonstatutory obvious double patenting are maintained.
New Claim Rejections - 35 USC § 112(b)
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 9 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.
Regarding claim 9, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Applicant may overcome the rejection by, for example, amending the claim to delete “, preferably wherein R8 is (CH2CH2CH3)”; “, preferably piperidine”; and “, preferably ethyl”.
New Claim Rejections - 35 USC § 112(d)
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 pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 3 and 5 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 3 recites compound 164 which has the structure
PNG
media_image1.png
100
390
media_image1.png
Greyscale
. Compound 164 does not properly depend from claim 1 since the parent claim does not sufficiently describe the claimed compound. For instance, compound 164 is nearly embraced by claim 1, but falls short wherein R7 does not have the following moiety shown in the formula:
PNG
media_image2.png
137
124
media_image2.png
Greyscale
.
Claim 5 recites compound 104 which has the structure
PNG
media_image3.png
104
325
media_image3.png
Greyscale
. Compound 104 does not properly depend from claim 4 since there is no alternative that sufficiently describes the claimed compound. For instance, compound 104 is nearly embraced by alternative 5 of claim 4, but falls short wherein R7 is F.
Claim 5 recites compound 139 which has the structure
PNG
media_image4.png
83
282
media_image4.png
Greyscale
. Compound 139 does not properly depend from claim 4 since there is no alternative that sufficiently describes the claimed compound. For instance, compound 139 is nearly embraced by alternative 2 of claim 4, but falls short wherein R6 is (CH2)3-tetrahydropyran.
Claim 5 recites compound 265 which has the structure
PNG
media_image5.png
83
325
media_image5.png
Greyscale
. Compound 265 does not properly depend from claim 4 since there is no alternative that sufficiently describes the claimed compound. For instance, compound 266 is nearly embraced by alternative 4 of claim 4, but falls short wherein at least one of X2, X3, X4, X5, X6, X7, X8 or X9 is not N. Alternative 5 also does not appear to embrace the compound given the reverse amide moiety.
Claim 5 recites compound 266 which has the structure
PNG
media_image6.png
101
365
media_image6.png
Greyscale
. Compound 266 does not properly depend from claim 4 since there is no alternative that sufficiently describes the claimed compound. For instance, compound 266 is nearly embraced by alternative 4 of claim 4, but falls short wherein at least one of X2, X3, X4, X5, X6, X7, X8 or X9 is not N.
Claim 5 recites compound 267 which has the structure
PNG
media_image7.png
103
367
media_image7.png
Greyscale
. Compound 267 does not properly depend from claim 4 since there is no alternative that sufficiently describes the claimed compound. For instance, compound 267 is nearly embraced by alternative 4 of claim 4, but falls short wherein at least one of X2, X3, X4, X5, X6, X7, X8 or X9 is not N.
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.
New 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.
(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.
(1 of 4) Claim 4 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Oyadomari in US 2021/0386715, as cited in the IDS dated 07/24/2022.
Oyadomari teaches compound 13,
PNG
media_image8.png
252
368
media_image8.png
Greyscale
(see page 7), which is embraced by instant formula I of claim 4, alternative 5 wherein X2, X3, X4 and X10 are each CH; X5, X6, X7, X8 and X9 are each C; R5 and R6 join to form a substituted 6-membered heterocyclic ring; R7 is C1 alkoxy; and R7’ are H.
Oyadomari also teaches compound 20,
PNG
media_image9.png
185
360
media_image9.png
Greyscale
(see page 8), which is embraced by instant formula I of claim 4, alternative 2 wherein X2, X3, X4 and X10 are each CH; X5, X6, X7, X8 and X9 are each C; R5 is H; R6 is substituted (CH2)3-pyrrolidine; R7 is C2 alkoxy; and R7’ are H.
Thus, claim 10 is anticipated by the prior art.
(2 of 4) Claim 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Entry 891897-09-9.
CAS Registry Entry 891897-09-9 discloses the compound
PNG
media_image10.png
180
469
media_image10.png
Greyscale
, which is embraced by instant formula I of claim 4, alternative 5 wherein X2, X3, X4 and X10 are each CH; X5, X6, X7, X8 and X9 are each C; R5 and R6 join to form an unsubstituted 7-membered heterocyclic ring; R7 is C2 alkoxy; and R7’ are H.
(3 of 4) Claims 4 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Entry 891896-13-2.
CAS Registry Entry 891896-13-2 discloses the compound
PNG
media_image11.png
238
664
media_image11.png
Greyscale
, which is embraced by instant formula I of claim 4, alternative 2 wherein X2, X3, X4 and X10 are each CH; X5, X6, X7, X8 and X9 are each C; R5 is H; R6 is R8-S-R10 wherein R8 is [CH2]p wherein p is 3 and R10 is C3 alkyl; R7 is F; and R7’ are H and is identical to compound 105 of instant claim 5.
(4 of 4) Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Entry 891899-99-9.
CAS Registry Entry 891899-99-9 discloses the compound
PNG
media_image12.png
184
419
media_image12.png
Greyscale
, which is identical to compound 104 of instant claim 5.
Maintained Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
(1 of 2) Claims 1-9 and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-7 and 13-15 of US Patent 12,404,283. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate the instant claims.
Regarding instant claims 1-2, patent ‘283 discloses compound 433S in claim 3:
PNG
media_image13.png
128
779
media_image13.png
Greyscale
. Compound 433S is embraced by instant formula I(h) of claim 1 wherein:
R1 and R3 are each H;
R2 and R4 are joined to form Ring F;
Ring F is substituted pyrrolidine;
X2, X3, X4, X6, X8, X9 and X10 are each CH;
X5 is C;
R5 is H;
R6 is R8-(substituted saturated, single 6-membered heterocyclic ring), i.e. (CH2)3-4-fluoropiperidine; and
One R7’ is F and the remaining three R7’ groups are each hydrogen.
Regarding instant claim 4 drawn to a compound of Formula (I), compound 433S reads on the claim as described above and wherein X7 is C and R7 is substituted pyrrolidine (see option 1 of claim 4 beginning on page 11 of the claims, for example). Regarding instant claims 6-7, the formula Bi is drawn to the structure
PNG
media_image14.png
247
282
media_image14.png
Greyscale
(see page 20). The
PNG
media_image15.png
101
146
media_image15.png
Greyscale
portion of compound 433S is embraced by Bi wherein R12 and R13 are joined to form a substituted piperidine ring.
Regarding instant claims 16 and 17, reference claims 14 and 15 are drawn to the same intended use and pharmaceutical composition using compounds of reference claim 1.
(2 of 2) Claims 1-9 and 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11-17 and 20-21 of copending Application No. 18/868,765 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate the instant claims.
Regarding instant claims 1-2, co-pending application ‘765 discloses compound 102S in claim 11:
PNG
media_image16.png
121
779
media_image16.png
Greyscale
. Compound 102S is nearly embraced by instant formula I(h) of claim 1 wherein:
R1 and R3 are each H;
R2 and R4 are joined to form Ring F;
Ring F is pyrrolidine;
X2, X3, X6, X8, X9 and X10 are each CH;
X5 is C;
R5 is H;
R6 is R8-(substituted saturated, single 6-membered heterocyclic ring), i.e. (CH2)3-4-fluoropiperidine; and
One R7’ is F and the remaining three R7’ groups are each hydrogen.
Compound 102S differs from instant formula I(h) wherein X4 is C-CH3 while instant claim 1 discloses that X4 is nitrogen or CH. However, substitution of a methyl in the reference claims for a hydrogen in the instant claims is considered obvious due to the close structural similarity of the compounds, the expectation that the substitution would confer the same properties, and the fact that the compounds would have the same utility. Additionally, a skilled artisan would be motivated to modify the X4 position specifically due to the many examples provided in the reference claims wherein X4 is CH, such as compound 137S:
PNG
media_image17.png
118
622
media_image17.png
Greyscale
.
Regarding instant claim 4 drawn to a compound of Formula (I), compound 102S reads on the claim as described above and wherein X7 is C and R7 is pyrrolidine (see option 1 of claim 4 beginning on page 11 of the claims, for example). Regarding instant claims 6-7, the formula Bi is drawn to the structure
PNG
media_image14.png
247
282
media_image14.png
Greyscale
(see page 20). The
PNG
media_image15.png
101
146
media_image15.png
Greyscale
portion of compound 102S is embraced by Bi wherein R12 and R13 are joined to form a substituted piperidine ring.
Regarding instant claims 16 and 17, reference claims 20 and 21 are drawn to the same intended use and pharmaceutical composition using compounds of reference claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 10 is allowed.
The closest prior art is from Al-Tel et al. “Rapid Assembly of Polyfunctional Structures Using a One-Pot Five- and Six-Component Sequential Groebke-Blackburn/Ugi/Passerini Process” Eur. J. Org. Chem. 2010, 5586-5593 as cited in the Office Action dated 12/15/2025.
Al-Tel teaches compound 36,
PNG
media_image18.png
252
313
media_image18.png
Greyscale
(see Scheme 5, page 5590), which is nearly embraced by instant formula I(f) of claim 10 wherein A’ is a thiophene ring; X2, X3, and X4 are each CH; R5 is C4 branched alkyl; R6 is C1 substituted alkyl; and R7 and R7’ are H. The prior art falls short wherein X10 differs from N or CH. There is no motivation or reasonable expectation of success to modify the prior art compound in such a way as to land on the instantly claimed formula.
Oyadomari in US 2021/0386715, as cited in the IDS dated 07/24/2022 and referenced in the rejection of claim 4 under 35 USC 102 in this Office Action, is also considered close art. However, the prior art reference does not teach compounds wherein the A’ ring of formula I(h) of instant claim 10,
PNG
media_image19.png
256
436
media_image19.png
Greyscale
, is a heterocycle. Again, there is no motivation or reasonable expectation of success to modify the prior art compound in such a way as to land on the instantly claimed formula.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jalisa H. Ferguson whose telephone number is (703)756-1489. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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, Amy L. Clark can be reached on (571) 272-1310. 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).
/J.H.F./Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
Prosecution Insights