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
Applicant’s election without traverse in the reply filed on 10 September 2025, is acknowledged.
Applicants’ elected compound:
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(seen in Example 63 of Specification and last compound of claim 10), which is a species of genus formula I of instant claim 1, wherein: Ar is
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; R6 is -CF3 (which is a halogenoC1-6alkyl); R1 and R2 are both methyl (-CH3); “L” is cyclohexyl (C6 cycloalkylene); and R3 is -OH.
Applicants’ elected species is free of the prior art.
Examiner extended the Markush search to the full scope of instant claim 1 but did not find any prior art for the full scope of genus formula I of claim 1.
Therefore, the Election of Species Requirement of 11 June 2025, is withdrawn, as all claims are free of the prior art.
All claims have been examined on the merits.
Current Status of 17/909,171
This Office Action is responsive to the amended claims of 2 September 2022.
Claims 1-12 and 17-20 have been examined on the merits. Claims 1-12 are original. Claim 17 is currently amended. Claims 18-20 are new.
Priority
The effective filing date is 26 March 2021.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10 September 2025; 24 April 2024; and 2 September 2022, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claim 12 is objected to since it does not begin with the article -- A -- or -- An -- . Independent claims should begin with “A” or “An”. Please revise accordingly.
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.
Claims 1-12 and 17-20 are 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.
Claim 1 variables R1 and R2 define a plurality of embodiments. However, as drafted, the claim is ambiguous (hence rendering the metes and bounds of claim 1 undefined and hence rendering claim 1 indefinite) as to which embodiments following “heteroaryl” are substituents of the heteroaryl versus substituents of R1 and R2. For example, are the cyano and -OR7 and -N(C1-6alkyl)2 substituents of R1’s heteroaryl or are they co-equal alternative embodiments (to heteroaryl) of R1? The same rationale applies to the alternative embodiments appearing after “heteroaryl” of R2.
It would be helpful (and help render moot this rejection) if Applicants could use semicolons to separate alternative embodiments of each of R1 and R2 and use commas to separate the embodiments of substituents of the heteroaryl.
Claims 2-12 and 17-20 are similarly rejected as indefinite since these claims refer back to claim 1 but do not remedy the rationale underpinning the basis for rejecting claim 1.
Conclusion
No claims are presently allowable as written.
However, the full scope of instant claim 1 genus formula I is free of the prior art.
Furthermore, there is no known prior art reference that either teaches or anticipates any compound of genus formula I.
The reference “ACS close art reference” (American Chemical Society. Chemical Abstract Service), discloses two exemplary compounds:
Compound 1 (CAS RN 1997321-95-5, Entered into STN: 21 Sep 2016):
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(see enclosed ACS reference). However, this is not a prior art compound since the carbonyl-methyl at a position corresponding to L-R3 cannot be interpreted as a C1alkylene since a C1alkylene would be a methylene (-CH2-). The instant claim 1 does not permit a carbonyl instead of a C1alkylene.
Compound 2 (RN 80071-97-2, entered into STN: 16 Nov 1984):
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(see enclosed ACS reference).
However, this is not a prior art compound since the disclaimer at the end of instant claim 1 is violated: here, variable Ar is formula (i) and R5 is H and R4 is a halogenoC1alkyl, BUT R1 and R2 are both hydrogen (H). However, the disclaimer requires one of R1 and R2 to be something other than H.
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.
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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.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625