DETAILED ACTION
Notice of Pre-AIA or AIA Status
The inventor or joint inventor should note that the instant invention, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-20 are pending in the instant invention. According to the Amendments to the Claims, filed December 15, 2025, claims 1-17 were amended and claims 18-20 were added.
Status of Priority
This invention is a Continuation (CON) of International Application No. PCT/EP2021/050840, filed January 15, 2021, which claims priority under 35 U.S.C. § 119(a-d) to EP 20152465.9, filed January 17, 2020.
Status of Restrictions / Election of Species
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The inventor’s or joint inventor’s affirmation of the following election, with traverse, in the reply filed on December 15, 2025, is acknowledged: a) Group I - claims 1-13 and 18; and b) substituted [1,2,4]triazolo[4,3-a]quinoxaline according to formula (I) - p. 106, Example Nr. 10.
Similarly, the inventor or joint inventor should further note that the requirement was made FINAL in the Non-Final Rejection, mailed on August 13, 2025.
Likewise, the inventor or joint inventor should further note that this invention contains claims 14-17, 19 and 20, drawn to nonelected inventions, with traverse, in the reply filed on December 15, 2025. A complete reply to the Final Rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144). See MPEP § 821.01.
Next, the inventor or joint inventor should further note that the sections of U.S.C. Title 35 that formed the basis of prior rejections formulated, as well as any references supporting said rejections, that are not included with this Office action, may be found in the Non-Final Rejection, mailed on August 13, 2025.
Moreover, the inventor or joint inventor should further note that any rejections and/or objections of record not explicitly addressed herein below, are hereby withdrawn, in light of the inventor’s or joint inventor’s arguments and/or the Amendments to the Claims, filed December 15, 2025.
Thus, a second Office action and prosecution on the merits of claims 1-13 and 18 is contained within.
New Claim Objections
Claim 1 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a), the existing recitation should be replaced with the following recitation:
A compound according to formula (1):
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(I)
or a physiologically acceptable salt or stereoisomer thereof,
wherein:
R1 is C1-6 alkylene-C3-10 cycloalkyl, C1-6 alkylene-3- to 7-membered heterocycloalkyl, C1-6 alkylene-aryl, C1-6 alkylene-5- to 10-membered heteroaryl, C(O)NH-C1-6 alkylene-aryl, C3-10 cycloalkyl, 3- to 7-membered heterocycloalkyl, aryl, or 5- to 10-membered heteroaryl, wherein the C1-6 alkylene is optionally unsaturated;
R3 is H or C1-10 alkyl, wherein the C1-10 alkyl is optionally unsaturated;
R4 is H or C1-10 alkyl, wherein the C1-10 alkyl is optionally unsaturated;
R5 is F, Cl, Br, I, C1-10 alkyl, OC1-10 alkyl, or C3-10 cycloalkyl, wherein the C1-10 alkyl or OC1-10 alkyl is optionally unsaturated;
R6 is H, F, Cl, Br, I, C1-10 alkyl, OC1-10 alkyl, or C3-10 cycloalkyl, wherein the C1-10 alkyl or OC1-10 alkyl is optionally unsaturated;
R7 is H, F, Cl, Br, I, C1-10 alkyl, OH, SC1-10 alkyl, or C3-10 cycloalkyl, wherein the C1-10 alkyl or SC1-10 alkyl is optionally unsaturated; or
R6 and R7, taken together with the carbon atoms to which they are attached, form a C3-10 cycloalkyl or 3- to 7-membered heterocycloalkyl; and
R10 is C1-10 alkyl or C3-10 cycloalkyl, wherein the C1-10 alkyl is optionally unsaturated;
wherein each C1-6 alkyl, C1-6 alkylene, C1-6 alkylene of C1-6 alkylene-C3-10 cycloalkyl, C1-6 alkylene of C1-6 alkylene-3- to 7-membered heterocycloalkyl, C1-6 alkylene of C1-6 alkylene-aryl, C1-6 alkylene of C1-6 alkylene-5- to 10-membered heteroaryl, and C1-10 alkyl is optionally and independently substituted with one or more substituents independently selected from the group consisting of F, Cl, Br, I, CN, C(O)C1-6 alkyl, C(O)NH2, C(O)NHC1-6 alkyl, C(O)N(C1-6 alkyl)2, C(O)OH, C(O)OC1-6 alkyl, C(O)C3-6 cycloalkyl, C(O)(3- to 7-membered heterocycloalkyl), C(O)pheny1, C(O)(5- or 6-membered heteroaryl), NH2, NHC1-6 alkyl, NHC(O)C1-6 alkyl; NHC(O)NH2, NHC(O)NHC1-6 alkyl, NHC(O)N(C1-6 alkyl)2, NHC(O)OC1-6 alkyl, NHS(O)2C1-6 alkyl, NHS(O)2NH2, NHS(O)2NHC1-6 alkyl, NHS(O)2N(C1-6 alkyl)2, NHS(O)2OH, NHS(O)2OC1-6 alkyl, N(C1-6 alkyl)2, N(C1-6 alkyl)-C(O)C1-6 alkyl, N(C1-6 alkyl)-C(O)NH2, N(C1-6 alkyl)-C(O)NHC1-6 alkyl, N(C1-6 alkyl)-C(O)N(C1-6 alkyl)2, N(C1-6 alkyl)-C(O)OC1-6 alkyl, N(C1-6 alkyl)-S(O)2OH, N(C1-6 alkyl)-S(O)2C1-6 alkyl, N(C1-6 alkyl)-S(O)2NH2, N(C1-6 alkyl)-S(O)2NHC1-6 alkyl, N(C1-6 alkyl)-S(O)2N(C1-6 alkyl)2, N(C1-6 alkyl)-S(O)2OC1-6 alkyl, OH, OC1-6 alkyl, OCH2F, OCHF2, OCF3; OCF2Cl, OCFCl2, OC(O)C1-6 alkyl, OC(O)NHC1-6 alkyl, OC(O)N(C1-6 alkyl)2, OC(O)OC1-6 alkyl, =O, OS(O)2NH2, OS(O)2NHC1-6 alkyl, OS(O)2N(C1-6 alkyl)2, OC3-6 cycloalkyl, O(3- to 7-membered heterocycloalkyl), Opheny1, O(5- or 6-membered heteroaryl), SC1-6 alkyl, SCHF2, SCH2F, SCF3, S(O)C1-6 alkyl, S(O)2C1-6 alkyl, S(O)2NH2, S(O)2NHC1-6 alkyl, S(O)2N(C1-6 alkyl)2, S(O)2OH, S(O)2OC1-6 alkyl, S(O)2C3-6 cycloalkyl, S(O)2(3- to 7-membered heterocycloalkyl), S(O)2pheny1, S(O)2(5- or 6-membered heteroaryl), C3-6 cycloalkyl, 3- to 7-membered heterocycloalkyl, phenyl, and 5- or 6-membered heteroaryl;
wherein each C3-10 cycloalkyl of C1-6 alkylene-C3-10 cycloalkyl, 3- to 7-membered heterocycloalkyl of C1-6 alkylene-3- to 7-membered heterocycloalkyl, C3-10 cycloalkyl, and 3- to 7-membered heterocycloalkyl is optionally and independently substituted with one or more substituents independently selected from the group consisting of F, Cl, Br, I, CN, C1-6 alkyl, CH2F, CHF2, CF3, CF2Cl, CFCl2, C(O)C1-6 alkyl, C(O)NH2, C(O)NHC1-6 alkyl, C(O)N(C1-6 alkyl)2, C(O)OH, C(O)OC1-6 alkyl, C(O)C3-6 cycloalkyl, C(O)(3- to 7-membered heterocycloalkyl), C(O)pheny1, C(O)(5- or 6-membered heteroaryl), NH2, NHC1-6 alkyl, NHC(O)C1-6 alkyl; NHC(O)NH2, NHC(O)NHC1-6 alkyl, NHC(O)N(C1-6 alkyl)2, NHC(O)OC1-6 alkyl, NHS(O)2C1-6 alkyl, NHS(O)2NH2, NHS(O)2NHC1-6 alkyl, NHS(O)2N(C1-6 alkyl)2, NHS(O)2OH, NHS(O)2OC1-6 alkyl, N(C1-6 alkyl)2, N(C1-6 alkyl)-C(O)C1-6 alkyl, N(C1-6 alkyl)-C(O)NH2, N(C1-6 alkyl)-C(O)NHC1-6 alkyl, N(C1-6 alkyl)-C(O)N(C1-6 alkyl)2, N(C1-6 alkyl)-C(O)OC1-6 alkyl, N(C1-6 alkyl)-S(O)2OH, N(C1-6 alkyl)-S(O)2C1-6 alkyl, N(C1-6 alkyl)-S(O)2NH2, N(C1-6 alkyl)-S(O)2NHC1-6 alkyl, N(C1-6 alkyl)-S(O)2N(C1-6 alkyl)2, N(C1-6 alkyl)-S(O)2OC1-6 alkyl, OH, OC1-6 alkyl, OCH2F, OCHF2, OCF3; OCF2Cl, OCFCl2, OC(O)C1-6 alkyl, OC(O)NHC1-6 alkyl, OC(O)N(C1-6 alkyl)2, OC(O)OC1-6 alkyl, =O, OS(O)2NH2, OS(O)2NHC1-6 alkyl, OS(O)2N(C1-6 alkyl)2, OC3-6 cycloalkyl, O(3- to 7-membered heterocycloalkyl), Opheny1, O(5- or 6-membered heteroaryl), SC1-6 alkyl, SCHF2, SCH2F, SCF3, S(O)C1-6 alkyl, S(O)2C1-6 alkyl, S(O)2NH2, S(O)2NHC1-6 alkyl, S(O)2N(C1-6 alkyl)2, S(O)2OH, S(O)2OC1-6 alkyl, S(O)2C3-6 cycloalkyl, S(O)2(3- to 7-membered heterocycloalkyl), S(O)2pheny1, S(O)2(5- or 6-membered heteroaryl), C3-6 cycloalkyl, 3- to 7-membered heterocycloalkyl, phenyl, and 5- or 6-membered heteroaryl; and
wherein each aryl of C1-6 alkylene-aryl, 5- to 10-membered heteroaryl of C1-6 alkylene-5- to 10-membered heteroaryl, aryl, and 5- to 10-membered heteroaryl is optionally and independently substituted with one or more substituents independently selected from the group consisting of F, Cl, Br, I, CN, C1-6 alkyl, CH2F, CHF2, CF3, CF2Cl, CFCl2, C1-6 alkylene-CH2F, C1-6 alkylene-CHF2, C1-6 alkylene-CF3, C1-6 alkylene-OH, C1-6 alkylene-OCH3, C1-6 alkylene-C3-6 cycloalkyl, C1-6 alkylene-3- to 7-membered heterocycloalkyl, C2-6 alkenyl, C2-6 alkynyl, C2-6 alkynylene-CH(OH)CH3, C2-6 alkynylene-C(CH3)2OH, C(O)C1-6 alkyl, C(O)NH2, C(O)NHC1-6 alkyl, C(O)NHOH, C(O)N(C1-6 alkyl)2, C(O)OH, C(O)OC1-6 alkyl, NH2, NHC1-6 alkyl, NHC(O)C1-6 alkyl; NHC(O)NH2, NHC(O)NHC1-6 alkyl, NHC(O)N(C1-6 alkyl)2, NHS(O)2C1-6 alkyl, N(C1-6 alkyl)2, N(C1-6 alkyl)-C(O)C1-6 alkyl, N(C1-6 alkyl)-C(O)NHC1-6 alkyl, N(C1-6 alkyl)-C(O)N(C1-6 alkyl)2, OH, OC1-6 alkyl, OCH2F, OCHF2, OCF3, OCF2Cl, OCFCl2, OC3-6 cycloalkyl, O(3- to 7-membered heterocycloalkyl), SC1-6 alkyl, SCF3, S(O)C1-6 alkyl, S(O)2C1-6 alkyl, S(O)2-C1-6 alkylene-C3-6 cycloalkyl, S(O)2NH2, S(O)2NHC1-6 alkyl, S(O)2N(C1-6 alkyl)2, S(O)2C3-6 cycloalkyl, C3-6 cycloalkyl, 3- to 7-membered heterocycloalkyl, phenyl, and 5- or 6-membered heteroaryl;
with the proviso that if R1 is indolyl or indazolyl and R7 is H, F, or Cl, then the indolyl or indazolyl of R1 is bound via its 5-membered ring to the remainder of formula (I).
Appropriate correction is required. See MPEP § 2173.02.
Claim 2 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound according to claim 1, or a physiologically acceptable salt or stereoisomer thereof, wherein:
each C1-6 alkyl, C1-6 alkylene, C1-6 alkylene of C1-6 alkylene-C3-10 cycloalkyl, C1-6 alkylene of C1-6 alkylene-3- to 7-membered heterocycloalkyl, C1-6 alkylene of C1-6 alkylene-aryl, C1-6 alkylene of C1-6 alkylene-5- to 10-membered heteroaryl, and C1-10 alkyl is optionally and independently substituted with one or more substituents independently selected from the group consisting of F, Cl, Br, I, CN, OH, OC1-6 alkyl, OCH2F, OCHF2, OCF3; OCF2Cl, OCFCl2, =O, C3-6 cycloalkyl, 3- to 7-membered heterocycloalkyl, and pyridinyl;
each C3-10 cycloalkyl of C1-6 alkylene-C3-10 cycloalkyl, 3- to 7-membered heterocycloalkyl of C1-6 alkylene-3- to 7-membered heterocycloalkyl, C3-10 cycloalkyl, and 3- to 7-membered heterocycloalkyl is optionally and independently substituted with one or more substituents independently selected from the group consisting of F, Cl, Br, I, CN, C1-6 alkyl, CH2F, CHF2, CF3, CF2Cl, CFCl2, OH, OC1-6 alkyl, OCH2F, OCHF2, OCF3; OCF2Cl, OCFCl2, =O, C3-6 cycloalkyl, 3- to 7-membered heterocycloalkyl, and pyridinyl; and
each aryl of C1-6 alkylene-aryl, 5- to 10-membered heteroaryl of C1-6 alkylene-5- to 10-membered heteroaryl, aryl, and 5- to 10-membered heteroaryl is optionally and independently substituted with one or more substituents independently selected from the group consisting of F, Cl, Br, I, CN, C1-6 alkyl, CH2F, CHF2, CF3, CF2Cl, CFCl2, C1-6 alkylene-CH2F, C1-6 alkylene-CHF2, C1-6 alkylene-CF3, C1-6 alkylene-OH, C1-6 alkylene-OCH3, C1-6 alkylene-C3-6 cycloalkyl, C1-6 alkylene-3- to 7-membered heterocycloalkyl, C2-6 alkenyl, C≡CCH3, C≡CCH(OH)CH3, C≡CC(CH3)2OH, C(O)C1-6 alkyl, C(O)OH, C(O)OC1-6 alkyl, NH2, OH, OC1-6 alkyl, OCH2F, OCHF2, OCF3; OCF2Cl, OCFCl2, OC3-6 cycloalkyl, O(3- to 7-membered heterocycloalkyl), SC1-6 alkyl, SCF3, S(O)C1-6 alkyl, S(O)2C1-6 alkyl, S(O)2-C1-6 alkylene-C3-6 cycloalkyl, S(O)2NH2, S(O)2NHC1-6 alkyl, S(O)2N(C1-6 alkyl)2, S(O)2C3-6 cycloalkyl, C3-6 cycloalkyl, 3- to 7-membered heterocycloalkyl, phenyl, and 5- or 6-membered heteroaryl.
Appropriate correction is required. See MPEP § 2173.02.
Claim 3 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound according to claim 1, or a physiologically acceptable salt or stereoisomer thereof, wherein:
(i) R1 is CH2-3- to 7-membered heterocycloalkyl, C(O)NH-CH2-aryl, aryl, or 5- to 10-membered heteroaryl; or
(ii) R3 is C1-6 alkyl, wherein the C1-6 alkyl is optionally unsaturated; and
R4 is C1-6 alkyl, wherein the C1-6 alkyl is optionally unsaturated; or
(iii) R1 is CH2-3- to 7-membered heterocycloalkyl, C(O)NH-CH2-aryl, aryl, or 5- to 10-membered heteroaryl;
R3 is C1-6 alkyl, wherein the C1-6 alkyl is optionally unsaturated; and
R4 is C1-6 alkyl, wherein the C1-6 alkyl is optionally unsaturated.
Appropriate correction is required. See MPEP § 2173.02.
Claim 4 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a) and/or 35 U.S.C. § 112(b), the existing recitation should be replaced with the following recitation:
A compound according to formula (1):
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(I)
or a physiologically acceptable salt or stereoisomer thereof,
wherein:
R1 is:
(i) CH2-pyrrolidinyl or C(O)NHCH2-phenyl; or
(ii) phenyl or naphthalenyl, wherein the phenyl or naphthalenyl is optionally substituted with one or more substituents independently selected from the group consisting of F, Cl, Br, I, CH3, CH2CH3, CF3, CH2CH2OH, CH2CH2OCH3, CH2-C3-6 cycloalkyl, CH=CH2, C≡CCH3, C(O)CH3, NH2, OCH3, OCF3, S(O)2CH3, S(O)2CH2CH3, S(O)2CH2C3-6 cycloalkyl, S(O)2C3-6 cycloalkyl, and C3-6 cycloalkyl; or
(iii) pyridinyl, wherein the pyridinyl is optionally substituted with one or more substituents independently selected from the group consisting of F, Cl, Br, I, CH3, CH2CH3, CF3, CH2CH2OH, CH2CH2OCH3, CH2-C3-6 cycloalkyl, CH=CH2, C≡CCH3, C(O)CH3, NH2, OCH3, S(O)2CH3, S(O)2CH2CH3, S(O)2CH2C3-6 cycloalkyl, S(O)2C3-6 cycloalkyl, and C3-6 cycloalkyl; or
(iv) 4,5,6,7-tetrahydro-2H-indazolyl, dihydroquinolinonyl, dihydrobenzodioxinyl, 2,4,5,6-tetrahydrocyclopenta[c]pyrazolyl, dihydropyrrolopyrazolyl, pyrrolyl, furanyl, thiophenyl, pyrazolyl, imidazolyl, isoxazolyl, oxazolyl, isothiazolyl, thiazolyl, triazolyl, oxadiazolyl, thiadiazolyl, tetrazolyl, pyridazinyl, pyrimidinyl, pyrazinyl, triazinyl, indolyl, indolinyl, indolizinyl, indazolyl, imidazothiazolyl, benzofuranyl, benzothiophenyl, benzoimidazolyl, benzooxazolyl, benzothiazolyl, benzotriazolyl, benzooxadiazolyl, benzothiadiazolyl, quinolinyl, isoquinolinyl, phthalazinyl, quinazolinyl, quinoxaliny1, pyrrolopyridinyl, pyrazolopyridinyl, imidazopyridinyl, purinyl, or naphthyridinyl; or
(v) carbazolyl, dibenzofuranyl, dibenzothienyl, phenazinyl, or phenothiazinyl; or
(vi) any of the following structures (1), (2), (3), (4), (5), (6), (7), (8), (9), (10), (11), (12), (13), (14), (15), (16), or (17):
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(1),
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(2),
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(3),
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(4),
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(5),
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(6),
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(7),
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(8),
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(9),
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(10),
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(11),
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(12),
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(13),
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(14),
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(15),
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(16), or
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(17),
wherein (5), (9), (15), or (17) is optionally substituted with one substituent selected from the group consisting of F and CH3; or
(vii) any of the following structures (II), (III), (IV), (V), or (VI):
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(II),
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(III),
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(IV),
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(V), or
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(VI),
wherein:
X is CR13, N, -NR13-, -O-, or -S-;
Z is CR13, N, -NR13-, -O-, or -S-;
each R11 is independently F, Cl, Br, I, CN, C1-6 alkyl, CF3, CH2CHF2, CH2CH2OH, CH2CH2OCH3, CH2C3-6 cycloalkyl, C≡CCH3, C≡CCH(OH)CH3, C≡CC(CH3)2OH, C(O)C1-6 alkyl, C(O)NH2, C(O)NHC1-6 alkyl, C(O)N(C1-6 alkyl)2, C(O)OC1-6 alkyl, NHC1-6 alkyl, N(C1-6 alkyl)2, OC1-6 alkyl, OC3-6 cycloalkyl, O(3- to 7-membered heterocycloalkyl), SC1-6 alkyl, S(O)C1-6 alkyl, S(O)2C1-6 alkyl, S(O)2CH2C3-6 cycloalkyl, S(O)2C3-6 cycloalkyl, C3-6 cycloalkyl, or 3- to 7-membered heterocycloalkyl;
R12 is F, Cl, Br, I, CN, C1-6 alkyl, CF3, CH2CHF2, CH2CH2OH, CH2CH2OCH3, CH2C3-6 cycloalkyl, C≡CCH3, C≡CCH(OH)CH3, C≡CC(CH3)2OH, C(O)C1-6 alkyl, C(O)NH2, C(O)NHC1-6 alkyl, C(O)N(C1-6 alkyl)2, C(O)OC1-6 alkyl, NHC1-6 alkyl, N(C1-6 alkyl)2, OC1-6 alkyl, OC3-6 cycloalkyl, O(3- to 7-membered heterocycloalkyl), SC1-6 alkyl, S(O)C1-6 alkyl, S(O)2C1-6 alkyl, S(O)2CH2C3-6 cycloalkyl, S(O)2C3-6 cycloalkyl, C3-6 cycloalkyl, or 3- to 7-membered heterocycloalkyl;
each R13 is independently F, Cl, Br, I, CN, C1-6 alkyl, CF3, CH2CHF2, CH2CH2OH, CH2CH2OCH3, CH2C3-6 cycloalkyl, C≡CCH3, C≡CCH(OH)CH3, C≡CC(CH3)2OH, C(O)C1-6 alkyl, C(O)NH2, C(O)NHC1-6 alkyl, C(O)N(C1-6 alkyl)2, C(O)OC1-6 alkyl, NHC1-6 alkyl, N(C1-6 alkyl)2, OC1-6 alkyl, OC3-6 cycloalkyl, O(3- to 7-membered heterocycloalkyl), SC1-6 alkyl, S(O)C1-6 alkyl, S(O)2C1-6 alkyl, S(O)2CH2C3-6 cycloalkyl, S(O)2C3-6 cycloalkyl, C3-6 cycloalkyl, or 3- to 7-membered heterocycloalkyl; and
n is 0, 1, 2, or 3; or
R3 is H or C1-10 alkyl, wherein the C1-10 alkyl is optionally unsaturated;
R4 is H or C1-10 alkyl, wherein the C1-10 alkyl is optionally unsaturated;
R5 is F, Cl, Br, I, C1-10 alkyl, OC1-10 alkyl, or C3-10 cycloalkyl, wherein the C1-10 alkyl or OC1-10 alkyl is optionally unsaturated;
R6 is H, F, Cl, Br, I, C1-10 alkyl, OC1-10 alkyl, or C3-10 cycloalkyl, wherein the C1-10 alkyl or OC1-10 alkyl is optionally unsaturated;
R7 is H, F, Cl, Br, I, C1-10 alkyl, OH, SC1-10 alkyl, or C3-10 cycloalkyl, wherein the C1-10 alkyl or SC1-10 alkyl is optionally unsaturated; or
R6 and R7, taken together with the carbon atoms to which they are attached, form a C3-10 cycloalkyl or 3- to 7-membered heterocycloalkyl; and
R10 is C1-10 alkyl or C3-10 cycloalkyl, wherein the C1-10 alkyl is optionally unsaturated;
wherein each C1-6 alkyl, C1-6 alkylene, C1-6 alkylene of C1-6 alkylene-C3-10 cycloalkyl, C1-6 alkylene of C1-6 alkylene-3- to 7-membered heterocycloalkyl, C1-6 alkylene of C1-6 alkylene-aryl, C1-6 alkylene of C1-6 alkylene-5- to 10-membered heteroaryl, and C1-10 alkyl is optionally and independently substituted with one or more substituents independently selected from the group consisting of F, Cl, Br, I, CN, C(O)C1-6 alkyl, C(O)NH2, C(O)NHC1-6 alkyl, C(O)N(C1-6 alkyl)2, C(O)OH, C(O)OC1-6 alkyl, C(O)C3-6 cycloalkyl, C(O)(3- to 7-membered heterocycloalkyl), C(O)pheny1, C(O)(5- or 6-membered heteroaryl), NH2, NHC1-6 alkyl, NHC(O)C1-6 alkyl; NHC(O)NH2, NHC(O)NHC1-6 alkyl, NHC(O)N(C1-6 alkyl)2, NHC(O)OC1-6 alkyl, NHS(O)2C1-6 alkyl, NHS(O)2NH2, NHS(O)2NHC1-6 alkyl, NHS(O)2N(C1-6 alkyl)2, NHS(O)2OH, NHS(O)2OC1-6 alkyl, N(C1-6 alkyl)2, N(C1-6 alkyl)-C(O)C1-6 alkyl, N(C1-6 alkyl)-C(O)NH2, N(C1-6 alkyl)-C(O)NHC1-6 alkyl, N(C1-6 alkyl)-C(O)N(C1-6 alkyl)2, N(C1-6 alkyl)-C(O)OC1-6 alkyl, N(C1-6 alkyl)-S(O)2OH, N(C1-6 alkyl)-S(O)2C1-6 alkyl, N(C1-6 alkyl)-S(O)2NH2, N(C1-6 alkyl)-S(O)2NHC1-6 alkyl, N(C1-6 alkyl)-S(O)2N(C1-6 alkyl)2, N(C1-6 alkyl)-S(O)2OC1-6 alkyl, OH, OC1-6 alkyl, OCH2F, OCHF2, OCF3; OCF2Cl, OCFCl2, OC(O)C1-6 alkyl, OC(O)NHC1-6 alkyl, OC(O)N(C1-6 alkyl)2, OC(O)OC1-6 alkyl, =O, OS(O)2NH2, OS(O)2NHC1-6 alkyl, OS(O)2N(C1-6 alkyl)2, OC3-6 cycloalkyl, O(3- to 7-membered heterocycloalkyl), Opheny1, O(5- or 6-membered heteroaryl), SC1-6 alkyl, SCHF2, SCH2F, SCF3, S(O)C1-6 alkyl, S(O)2C1-6 alkyl, S(O)2NH2, S(O)2NHC1-6 alkyl, S(O)2N(C1-6 alkyl)2, S(O)2OH, S(O)2OC1-6 alkyl, S(O)2C3-6 cycloalkyl, S(O)2(3- to 7-membered heterocycloalkyl), S(O)2pheny1, S(O)2(5- or 6-membered heteroaryl), C3-6 cycloalkyl, 3- to 7-membered heterocycloalkyl, phenyl, and 5- or 6-membered heteroaryl;
wherein each C3-10 cycloalkyl of C1-6 alkylene-C3-10 cycloalkyl, 3- to 7-membered heterocycloalkyl of C1-6 alkylene-3- to 7-membered heterocycloalkyl, C3-10 cycloalkyl, and 3- to 7-membered heterocycloalkyl is optionally and independently substituted with one or more substituents independently selected from the group consisting of F, Cl, Br, I, CN, C1-6 alkyl, CH2F, CHF2, CF3, CF2Cl, CFCl2, C(O)C1-6 alkyl, C(O)NH2, C(O)NHC1-6 alkyl, C(O)N(C1-6 alkyl)2, C(O)OH, C(O)OC1-6 alkyl, C(O)C3-6 cycloalkyl, C(O)(3- to 7-membered heterocycloalkyl), C(O)pheny1, C(O)(5- or 6-membered heteroaryl), NH2, NHC1-6 alkyl, NHC(O)C1-6 alkyl; NHC(O)NH2, NHC(O)NHC1-6 alkyl, NHC(O)N(C1-6 alkyl)2, NHC(O)OC1-6 alkyl, NHS(O)2C1-6 alkyl, NHS(O)2NH2, NHS(O)2NHC1-6 alkyl, NHS(O)2N(C1-6 alkyl)2, NHS(O)2OH, NHS(O)2OC1-6 alkyl, N(C1-6 alkyl)2, N(C1-6 alkyl)-C(O)C1-6 alkyl, N(C1-6 alkyl)-C(O)NH2, N(C1-6 alkyl)-C(O)NHC1-6 alkyl, N(C1-6 alkyl)-C(O)N(C1-6 alkyl)2, N(C1-6 alkyl)-C(O)OC1-6 alkyl, N(C1-6 alkyl)-S(O)2OH, N(C1-6 alkyl)-S(O)2C1-6 alkyl, N(C1-6 alkyl)-S(O)2NH2, N(C1-6 alkyl)-S(O)2NHC1-6 alkyl, N(C1-6 alkyl)-S(O)2N(C1-6 alkyl)2, N(C1-6 alkyl)-S(O)2OC1-6 alkyl, OH, OC1-6 alkyl, OCH2F, OCHF2, OCF3; OCF2Cl, OCFCl2, OC(O)C1-6 alkyl, OC(O)NHC1-6 alkyl, OC(O)N(C1-6 alkyl)2, OC(O)OC1-6 alkyl, =O, OS(O)2NH2, OS(O)2NHC1-6 alkyl, OS(O)2N(C1-6 alkyl)2, OC3-6 cycloalkyl, O(3- to 7-membered heterocycloalkyl), Opheny1, O(5- or 6-membered heteroaryl), SC1-6 alkyl, SCHF2, SCH2F, SCF3, S(O)C1-6 alkyl, S(O)2C1-6 alkyl, S(O)2NH2, S(O)2NHC1-6 alkyl, S(O)2N(C1-6 alkyl)2, S(O)2OH, S(O)2OC1-6 alkyl, S(O)2C3-6 cycloalkyl, S(O)2(3- to 7-membered heterocycloalkyl), S(O)2pheny1, S(O)2(5- or 6-membered heteroaryl), C3-6 cycloalkyl, 3- to 7-membered heterocycloalkyl, phenyl, and 5- or 6-membered heteroaryl; and
wherein each aryl of C1-6 alkylene-aryl, 5- to 10-membered heteroaryl of C1-6 alkylene-5- to 10-membered heteroaryl, aryl, and 5- to 10-membered heteroaryl is optionally and independently substituted with one or more substituents independently selected from the group consisting of F, Cl, Br, I, CN, C1-6 alkyl, CH2F, CHF2, CF3, CF2Cl, CFCl2, C1-6 alkylene-CH2F, C1-6 alkylene-CHF2, C1-6 alkylene-CF3, C1-6 alkylene-OH, C1-6 alkylene-OCH3, C1-6 alkylene-C3-6 cycloalkyl, C1-6 alkylene-3- to 7-membered heterocycloalkyl, C2-6 alkenyl, C2-6 alkynyl, C2-6 alkynylene-CH(OH)CH3, C2-6 alkynylene-C(CH3)2OH, C(O)C1-6 alkyl, C(O)NH2, C(O)NHC1-6 alkyl, C(O)NHOH, C(O)N(C1-6 alkyl)2, C(O)OH, C(O)OC1-6 alkyl, NH2, NHC1-6 alkyl, NHC(O)C1-6 alkyl; NHC(O)NH2, NHC(O)NHC1-6 alkyl, NHC(O)N(C1-6 alkyl)2, NHS(O)2C1-6 alkyl, N(C1-6 alkyl)2, N(C1-6 alkyl)-C(O)C1-6 alkyl, N(C1-6 alkyl)-C(O)NHC1-6 alkyl, N(C1-6 alkyl)-C(O)N(C1-6 alkyl)2, OH, OC1-6 alkyl, OCH2F, OCHF2, OCF3, OCF2Cl, OCFCl2, OC3-6 cycloalkyl, O(3- to 7-membered heterocycloalkyl), SC1-6 alkyl, SCF3, S(O)C1-6 alkyl, S(O)2C1-6 alkyl, S(O)2-C1-6 alkylene-C3-6 cycloalkyl, S(O)2NH2, S(O)2NHC1-6 alkyl, S(O)2N(C1-6 alkyl)2, S(O)2C3-6 cycloalkyl, C3-6 cycloalkyl, 3- to 7-membered heterocycloalkyl, phenyl, and 5- or 6-membered heteroaryl;
with the proviso that if R1 is indolyl or indazolyl and R7 is H, F, or Cl, then the indolyl or indazolyl of R1 is bound via its 5-membered ring to the remainder of formula (I).
Appropriate correction is required. See MPEP § 2173.02.
Claim 5 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound according to claim 4, or a physiologically acceptable salt or stereoisomer thereof, wherein:
(i) R1 is CH2-pyrrolidinyl, C(O)NHCH2-phenyl, 4,5,6,7-tetrahydro-2H-indazolyl, dihydroquinolinonyl, dihydrobenzodioxinyl, 2,4,5,6-tetrahydrocyclopenta[c]pyrazolyl, dihydropyrrolopyrazolyl, phenyl, naphthalenyl, pyrrolyl, furanyl, thiophenyl, pyrazolyl, imidazolyl, isoxazolyl, oxazolyl, isothiazolyl, thiazolyl, triazolyl, oxadiazolyl, thiadiazolyl, tetrazolyl, pyridinyl, pyridazinyl, pyrimidinyl, pyrazinyl, triazinyl, indolyl, indolinyl, indolizinyl, indazolyl, imidazothiazolyl, benzofuranyl, benzothiophenyl, benzoimidazolyl, benzooxazolyl, benzothiazolyl, benzotriazolyl, benzooxadiazolyl, benzothiadiazolyl, quinolinyl, isoquinolinyl, phthalazinyl, quinazolinyl, quinoxaliny1, pyrrolopyridinyl, pyrazolopyridinyl, imidazopyridinyl, purinyl, or naphthyridinyl; or
(ii) R1 is (17):
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(17),
wherein (17) is optionally substituted with one substituent selected from the group consisting of F and CH3; or
(iii) carbazolyl, dibenzofuranyl, dibenzothienyl, phenazinyl, or phenothiazinyl; or
(v) R3 is C1-6 alkyl, wherein the C1-6 alkyl is optionally unsaturated; and
R4 is C1-6 alkyl, wherein the C1-6 alkyl is optionally unsaturated; or
(v) R5 is F, Cl, C1-6 alkyl, OC1-6 alkyl, or C3-10 cycloalkyl, wherein the C1-6 alkyl or OC1-6 alkyl is optionally unsaturated; or
(vi) R6 is H, F, Cl, C1-6 alkyl, OC1-6 alkyl, or C3-10 cycloalkyl, wherein the C1-6 alkyl or OC1-6 alkyl is optionally unsaturated; or
(vii) R7 is H, F, Cl, C1-6 alkyl, OH, SC1-6 alkyl, or C3-10 cycloalkyl, wherein the C1-6 alkyl or SC1-6 alkyl is optionally unsaturated; or
(viii) R10 is C1-6 alkyl or C3-10 cycloalkyl, wherein the C1-6 alkyl is optionally unsaturated.
Appropriate correction is required. See MPEP § 2173.02.
Claim 6 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound according to claim 1, or a physiologically acceptable salt or stereoisomer thereof, wherein:
(i) R3 is C1-3 alkyl, wherein the C1-3 alkyl is optionally unsaturated; and
R4 is C1-3 alkyl, wherein the C1-3 alkyl is optionally unsaturated; or
(ii) R5 is F, Cl, CH3, CH2CH3, CH2CH2CH3, CHF2, CF3, OCH3, OCH2CH3, OCH2CH2CH3, or C3-10 cycloalkyl, wherein the CH2CH3, CH2CH2CH3, OCH2CH3, or OCH2CH2CH3 is optionally unsaturated; or
(iii) R6 is H, F, Cl, CHF2, or OCF3; or
(iv) R7 is H, F, Cl, CH3, CH2CH3, CF3, C(CH3)2OH, OH, or SCH3, wherein the CH2CH3 is optionally unsaturated.
Appropriate correction is required. See MPEP § 2173.02.
Claim 7 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound according to claim 1, or a physiologically acceptable salt or stereoisomer thereof, wherein R6 and R7, taken together with the carbon atoms to which they are attached, form:
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,
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, or
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,
wherein m is 1, 2, 3, or 4.
Appropriate correction is required. See MPEP § 2173.02.
Claim 8 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound according to claim 1, or a physiologically acceptable salt or stereoisomer thereof, wherein R6 and R7, taken together with the carbon atoms to which they are attached, form:
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,
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, or
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.
Appropriate correction is required. See MPEP § 2173.02.
Claim 9 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The compound according to claim 1, or a physiologically acceptable salt or stereoisomer thereof, wherein:
(i) R3 is CH3; and
R4 is CH3; or
(ii) R5 is F, Cl, CH3, CH2CH3, CH2CH2CH3, CHF2, CF3, OCH3, OCH2CH3, OCH2CH2CH3, or cyclopropyl, wherein the CH2CH3, CH2CH2CH3, OCH2CH3, or OCH2CH2CH3 is optionally unsaturated; or
(iii) R3 is CH3;
R4 is CH3; and
R5 is F, Cl, CH3, CH2CH3, CH2CH2CH3, CHF2, CF3, OCH3, OCH2CH3, OCH2CH2CH3, or cyclopropyl, wherein the CH2CH3, CH2CH2CH3, OCH2CH3, or OCH2CH2CH3 is optionally unsaturated.
Appropriate correction is required. See MPEP § 2173.02.
Claim 10 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
The compound according to claim 1, or a physiologically acceptable salt or stereoisomer thereof, wherein R10 is CH3.
Appropriate correction is required. See MPEP § 2173.02.
Claim 11 is objected to because of the following informalities: for clarity and precision, a physiologically acceptable salt or stereoisomer thereof should be replaced with or a physiologically acceptable salt or stereoisomer thereof. Appropriate correction is required. See MPEP § 2173.02.
Claim 12 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
A pharmaceutical dosage form comprising a compound according to claim 1, or a physiologically acceptable salt or stereoisomer thereof.
Appropriate correction is required. See MPEP § 2173.02.
Claim 13 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
A pharmaceutical dosage form comprising a compound according to claim 11, or a physiologically acceptable salt or stereoisomer thereof.
Appropriate correction is required. See MPEP § 2173.02.
Claim 18 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
A pharmaceutical dosage form comprising a compound according to claim 4, or a physiologically acceptable salt or stereoisomer thereof.
Appropriate correction is required. See MPEP § 2173.02.
New Claim Rejections - 35 U.S.C. § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. § 112:
(a) IN GENERAL. The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1 is rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or joint inventor, at the time the invention was filed, had possession of the claimed invention. Specifically, the substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I), …wherein aryl and 5 to 10-membered heteroaryl in each case independently from one another are unsubstituted or mono- or polysubstituted with one or more substituents independently selected from the group consisting of… C1-6-alkylene-O-C1-6-alkyl… and =O, lacks adequate support within the original specification, as filed. The specification, on pages 2-3, discloses generic substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I), which fail to expressly include substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I), …wherein aryl and 5 to 10-membered heteroaryl in each case independently from one another are unsubstituted or mono- or polysubstituted with one or more substituents independently selected from the group consisting of… C1-6-alkylene-O-C1-6-alkyl… and =O. Consequently, one of ordinary skill in the art, at the time this invention was filed, may neither be reasonably apprised of the scope of the instantly recited substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I), nor recognize that the inventor or joint inventor was in possession of the instantly recited substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I), in view of the original specification of the invention.
The inventor or joint inventor should note that under 35 U.S.C. § 132 and 35 U.S.C. § 251, the proscription against the introduction of new matter in a patent invention serves to prevent an inventor or joint inventor from adding information that goes beyond the subject matter originally filed. {See In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326 (CCPA 1981); and MPEP § 2163.06-2183.07}.
Similarly, the inventor or joint inventor should further note that in order to comply with the written description requirement of 35 U.S.C. § 112(a), each claim limitation must be expressly, implicitly, or inherently supported in the originally filed specification. [W]hen an explicit limitation in a claim is not present in the written description whose benefit is sought, it must be shown that a person of ordinary skill would have understood, at the time the patent invention was filed, that the description requires that limitation. {See Hyatt v. Boone, 146 F.3d 1348, 1353, 47 USPQ2d 1128, 1131 (Fed. Cir. 1998); and In re Wright, 866 F.2d 422, 425, 9 USPQ2d 1649, 1651 (Fed. Cir. 1989)}.
Consequently, the inventor or joint inventor should further note that [N]ew or amended claims, which introduce elements or limitations which are not supported by the as-filed disclosure, violate the written description requirement. {See In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971); and In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972)}.
Moreover, the inventor or joint inventor should further note that when filing an amendment, support should be shown in the original specification for new or amended claims. See MPEP § 714.02 and § 2163.06.
The examiner suggests amending the claim, particularly as stated in the section above entitled New Claim Objections, to overcome this rejection.
New Claim Rejections - 35 U.S.C. § 112(b)
The following is a quotation of the second paragraph of 35 U.S.C. § 112:
(b) CONCLUSION. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or joint inventor regards as the invention.
Claim 2 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to set forth the subject matter which the inventor or joint inventor regards as the invention.
The inventor or joint inventor should note that claim 2 recites the limitation, The compound according to claim 1, wherein… aryl and 5 to 10-membered heteroaryl… are… mono- or polysubstituted with one or more substituents selected from… =O and C1-6 alkylene-OC1-6 alkyl. There is insufficient antecedent basis, in claim 1, for this limitation, with respect to the substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I). According to claim 1, the aryl and 5 to 10-membered heteroaryl of R1 is not recited as optionally substituted with =O and C1-6 alkylene-OC1-6 alkyl, respectively, with regard to the substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I).
The examiner suggests amending the claim, particularly as stated in the section above entitled New Claim Objections, to overcome this rejection.
Claim 3 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to set forth the subject matter which the inventor or joint inventor regards as the invention.
The inventor or joint inventor should note that a broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c), MPEP § 2173.05(h), and/or Eli Lilly & Co. v. Teva Parenteral Meds., 845 F.3d 1357, 1371, 121 USPQ2d 1277, 1287 (Fed. Cir. 2017).
Similarly, the inventor or joint inventor should further note that claim 3 recites the broad limitation, or, with regard to R1, R3, and R4, respectively, and the claim also recites and, with regard to R1, R3, and R4, respectively, which is the narrower statement of the limitation.
Likewise, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), pertaining to where broad language is followed by such as and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and consequently, not required, or (b) a required feature of the claim.
Moreover, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
The examiner suggests amending the claim, particularly as stated in the section above entitled New Claim Objections, to overcome this rejection.
Claim 5 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to set forth the subject matter which the inventor or joint inventor regards as the invention.
The inventor or joint inventor should note that a broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c), MPEP § 2173.05(h), and/or Eli Lilly & Co. v. Teva Parenteral Meds., 845 F.3d 1357, 1371, 121 USPQ2d 1277, 1287 (Fed. Cir. 2017).
Similarly, the inventor or joint inventor should further note that claim 5 recites the broad limitation, or, with regard to R1, R3, R4, R5, R6, R7, and R10, respectively, and the claim also recites and, with regard to R1, R3, R4, R5, R6, R7, and R10, respectively, which is the narrower statement of the limitation.
Likewise, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), pertaining to where broad language is followed by such as and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and consequently, not required, or (b) a required feature of the claim.
Moreover, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
The examiner suggests amending the claim, particularly as stated in the section above entitled New Claim Objections, to overcome this rejection.
Claim 6 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to set forth the subject matter which the inventor or joint inventor regards as the invention.
The inventor or joint inventor should note that a broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c), MPEP § 2173.05(h), and/or Eli Lilly & Co. v. Teva Parenteral Meds., 845 F.3d 1357, 1371, 121 USPQ2d 1277, 1287 (Fed. Cir. 2017).
Similarly, the inventor or joint inventor should further note that claim 6 recites the broad limitation, or, with regard to R3, R4, R5, R6, and R7, respectively, and the claim also recites and, with regard to R3, R4, R5, R6, and R7, respectively, which is the narrower statement of the limitation.
Likewise, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), pertaining to where broad language is followed by such as and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and consequently, not required, or (b) a required feature of the claim.
Moreover, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
The examiner suggests amending the claim, particularly as stated in the section above entitled New Claim Objections, to overcome this rejection.
Claim 9 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to set forth the subject matter which the inventor or joint inventor regards as the invention.
The inventor or joint inventor should note that a broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c), MPEP § 2173.05(h), and/or Eli Lilly & Co. v. Teva Parenteral Meds., 845 F.3d 1357, 1371, 121 USPQ2d 1277, 1287 (Fed. Cir. 2017).
Similarly, the inventor or joint inventor should further note that claim 9 recites the broad limitation, or, with regard to R3, R4, and R5, respectively, and the claim also recites and, with regard to R3, R4, and R5, respectively, which is the narrower statement of the limitation.
Likewise, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), pertaining to where broad language is followed by such as and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and consequently, not required, or (b) a required feature of the claim.
Moreover, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
The examiner suggests amending the claim, particularly as stated in the section above entitled New Claim Objections, to overcome this rejection.
New Claim Rejections - Obviousness-type 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 obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined invention claim is not patentably distinct from the reference claims because the examined invention claim is either anticipated by, or would have been obvious over, the reference claims. {See 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)}.
US Patent No. 10,981,918
Consequently, at least claims 1-6, 9, 10, 12, 13 and 18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1-11 and 13 of US Patent No. 10,981,918. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 in US 10,981,918 recites substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I), where n = 0; R1 = -C1-10 alkyl; R2 = -C1-10 alkyl, substituted with one or more F; R3 = -F; R4 = -F; R5 = -unsubstituted C1-4 alkyl; R6 = -unsubstituted C1-4 alkyl; R10 = -H; X = -NR7-, wherein R7 = -H; and Z = N, respectively, which provide overlapping subject matter with respect to the instantly recited substituted [1,2,4]triazolo-[4,3-a]quinoxalines according to the formula (I), where R3 = -C1-10 alkyl; R4 = -C1-10 alkyl; R1 = -5 to 10-membered heteroaryl; R5 = -C1-10 alkyl, substituted with one or more F; R6 = -F; R7 = -F; and R10 = -C1-10 alkyl, respectively.
US Patent No. 11,981,677
At least claims 1-6, 9, 10, 12, 13 and 18 are further rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1-11 and 13 of US Patent No. 11,981,677. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 in US 11,981,677 recites substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I), where n = 0; R1 = -alkyl; R2 = -alkyl; R3 = -F; R4 = -F; R5 = -unsubstituted C1-4 alkyl; R6 = -unsubstituted C1-4 alkyl; R10 = -H; X = NR7, wherein R7 = -H; and Z = N, respectively, which provide overlapping subject matter with respect to the instantly recited substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I), where R3 = -C1-10 alkyl; R4 = -C1-10 alkyl; R1 = -5 to 10-membered heteroaryl; R5 = -C1-10 alkyl; R6 = -F; R7 = -F; and R10 = -C1-10 alkyl, respectively.
US Patent No. 12,110,293
At least claims 1-6, 9, 10, 12, 13 and 18 are further rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1-11 and 13 of US Patent No. 12,110,293. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 in US 12,110,293 recites substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I), where n = 0; R1 = -C1-10 alkyl; R2 = -C1-10 alkyl, substituted with one or more F; R3 = -F; R5 = -unsubstituted C1-4 alkyl; R6 = -unsubstituted C1-4 alkyl; R10 = -H; X = -NR7-, wherein R7 = -H; and Z = N, respectively, which provide overlapping subject matter with respect to the instantly recited substituted [1,2,4]triazolo[4,3-a]quinoxalines according to the formula (I), where R3 = -C1-10 alkyl; R4 = -C1-10 alkyl; R1 = -5 to 10-membered heteroaryl; R5 = -C1-10 alkyl, substituted with one or more F; R6 = -F; R7 = -H; and R10 = -C1-10 alkyl, respectively.
The inventor or joint inventor should note that a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 37 CFR 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground, provided the conflicting invention or patent either is shown to be commonly owned with this invention, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Similarly, the inventor or joint inventor should further note that the USPTO internet Web site contains terminal disclaimer forms which may be used, and the inventor or joint inventor is encouraged to visit http://www.uspto.gov/forms/, where (i) the filing date of the invention will determine what form should be used, and (ii) a web-based eTerminal Disclaimer may be filled out completely online using web-screens, respectively.
Moreover, the inventor or joint inventor should further note that an eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission.
Finally, for more information about eTerminal Disclaimers, the inventor or joint inventor should refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Allowable Subject Matter
No claims are allowed.
Conclusion
The inventor’s or joint inventor’s arguments and/or the Amendments to the Claims, filed December 15, 2025, necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). The inventor or joint inventor 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DOUGLAS M. WILLIS, whose telephone number is 571-270-5757. The Examiner may normally be reached on Monday thru Thursday from 8:00-6:00 EST. The Examiner is also available on alternate Fridays.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Mr. Jeffrey Murray, may be reached on 571-272-9023. The fax phone number for the organization where this invention or proceeding is assigned is 571-273-8300.
Information regarding the status of an invention may be obtained from Patent Center. For more information about Patent Center, see https://www.uspto.gov/patents/apply/patent-center. Should you have questions on access to Patent Center, contact the Patent Electronic Business Center (PEBC) at 866-217-9197 (toll-free) or ebc@uspto.gov.
/DOUGLAS M WILLIS/
Primary Examiner, Art Unit 1624