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 .
Status of the Claims
Claims 23, 84, 86, and 107-113 are pending. Acknowledgment is made of the amendment of claims 23, 84, and 86; the cancellation of claims 1-15; and the addition of new claims 108-113 in the reply filed 01/16/2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/16/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Restriction/Election Requirement
Applicant’s elected species of compound 36 from paragraph [0288] of the specification, shown below, appears allowable.
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Therefore, the search has been expanded to include the full scope of the claims. Claims 23, 84, 86, and 107-113 are currently under examination.
Withdrawn Objections/Rejections
Applicant’s amendment to the claims, filed 01/16/2026, overcomes the objection to the claims 4, 15, and 84 for minor informalities. The objection to claims 4, 15, and 84 has been withdrawn.
Applicant’s amendment to the claims, filed 01/16/2026, overcomes the rejection of claims 3 and 4 under 35 U.S.C. 112(b) for indefiniteness. The rejection of claims 3 and 4 has been withdrawn.
Applicant’s amendment to the claims, filed 01/16/2026, overcomes the rejection of claim 4 under 35 U.S.C. 112(d) for failing to include the limitations of the claim upon which it depends. The rejection of claim 4 has been withdrawn.
Applicant’s amendment to the claims, filed 01/16/2026, overcomes the rejection of claims 1-4, 7-9, and 86 under 35 U.S.C. 102(a)(1) as being anticipated by, and claims 6, 11-13, and 15 under 35 U.S.C. 103 as being unpatentable over, Nie et al. (WO 2014089364 A1). The position of the carboxylic acid and the halogen on the compound taught by Nie et al. no longer reads on the instant claims. The rejection of claims 1-4, 6-9, 11-13, and 86 has been withdrawn.
Applicant’s amendment to the claims, filed 01/16/2026, overcomes the rejection of claims 1, 2, 6-9, 11, 12, and 86 under 35 U.S.C. 102(a)(1) as being anticipated by Beck et al. (cited in previous office action). The compounds of Beck et al. contain a pyridine ring rather than a phenyl ring, which no longer reads on the amended claims. The rejection of claims rejection of claims 1, 2, 6-9, 11, 12, and 86 has been withdrawn.
Applicant’s amendment to the claims, filed 01/16/2026, overcomes the rejection of claims 1, 2, 6-9, 11, 12, and 86 under 35 U.S.C. 102(a)(1) as being anticipated by Flamme et al. (WO 2006114213 A1). The compounds of Flamme et al. contain a pyridine ring rather than a phenyl ring, which no longer reads on the amended claims. The rejection of claims rejection of claims 1, 2, 6-9, 11, 12, and 86 has been withdrawn.
Applicant’s amendment to the claims, filed 01/16/2026, overcomes the rejection of claims 1, 2, 6-9, 11, 12, and 86 under 35 U.S.C. 102(a)(1) as being anticipated by Thede et al. (WO 2008067874 A1). The compounds of Thede et al. contain a pyridine ring rather than a phenyl ring, which no longer reads on the amended claims. The rejection of claims rejection of claims 1, 2, 6-9, 11, 12, and 86 has been withdrawn.
Applicant’s amendment to the claims, filed 01/16/2026, overcomes the rejection of claims 1-4, 6-9, 11-13, 15, 84, 86, and 107 on the ground of nonstatutory double patenting over copending Application No. 17/906,653. The newly amended claims no longer contain Formula A which overlapped in scope with Application ‘653. Application ‘653 does not teach compounds containing a carboxylic acid group on the 2-pyridinyl ring. The rejection of claims 1-4, 6-9, 11-13, 15, 84, 86, and 107 has been withdrawn.
New Rejections
Necessitated by Claim Amendment
Claim Rejections - 35 USC § 112
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.
Claim 84 is 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 84 teaches compound 16, shown below, where R5 of Formula (III) is -OH.
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However, Claim 23 requires that the R5 substituent is CN or halogen. Therefore, claim 2 fails to further limit the subject matter of the claim upon which it depends. Therefore, claim 84 fails to include all the limitations of the claim upon which it depends.
Claim 107 is objected to as being dependent upon a rejected claim.
Allowable Subject Matter
Claims 23, 86, and 108-113 are allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Claim 84 is rejected.
Claim 107 is objected to.
Claims 23, 86, and 108-113 are allowed.
THIS ACTION IS MADE FINAL. 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 RILLA M SAMSELL whose telephone number is (703)756-5841. The examiner can normally be reached Monday-Friday, 9-5.
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/R.M.S./Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624
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