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
Claims 1, 27-29, 33, 34, 37 and 41-48 are pending in the instant application.
Continued Examination Under 37 CFR 1.114
A request for continued examination under
37 CFR 1.114, including the fee set forth in
37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 10, 2026 has been entered.
Election/Restrictions
Applicant’s election with traverse of Group I,
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and the species of the 1st compound disclosed on page 36 of the instant specification and the 1st compound claimed in instant claim 25 (reproduced below),
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,
in the reply filed on September 4, 2025 was acknowledged in a previous Office Action. The requirement was deemed proper and therefore made FINAL in a previous Office Action.
NOTE TO APPLICANT
The elected species is not embraced by currently amended independent claim 1 due to the amended definition of the R2 variable in claim 1.
Applicant’s claimed compound genera in independent claim 1 has a number of variables and their permutations and combinations result in a vast number of compounds that are generically claimed. Therefore, the products of elected Group I have been examined according to MPEP §803.02.
As a result of the current amendments to the claims per the Amendment filed April 10, 2026, the search and examination identified in the previous Office Action has been expanded as detailed below.
The subject matter of the expanded search and examination thus far, inclusive of the elected species, is as follows:
a compound of instant formula (I) or formula (II),
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wherein
R1 is substituted or unsubstituted aryl;
R2 is substituted or unsubstituted aryl;
R3 is hydrogen or alkyl; and
R4 is aryl.
The current pending claims embraced by the above identified expanded search and examination are
claims 1, 27-29, 33, 34, 37 and 41.
Subject matter not embraced by the above identified expanded search and examination and Claims 42-48 are withdrawn from further consideration pursuant to
37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on
September 4,2025.
Rejections made in the previous Office Action which do not appear below have been overcome by Applicant’s amendments to the claims. Therefore, arguments pertaining to these rejections will not be addressed.
As a result of the amendments to the claims per the Amendment filed April 10, 2026, the following rejections now apply.
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.
Claim 1 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.
Claim 1 is unclear when the R3 variable represents absent. The R3 variable is attached to the nitrogen in instant formula (II),
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. A dangling valence problem arises when the R3 variable represents absent. The claimed compounds should not have dangling valences. Claims of the “dangling valence” type in which only the portion of the structure responsible for the activity is defined in the claim are indefinite because the claims are of indeterminate in scope and generally broader than any possible supporting disclosure. Ex parte Diamond, 123 USPQ 167 (POBA 1959). Therefore, claim 1 is indefinite.
Claim Rejections - 35 USC § 102
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 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.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
the compound of PubChem CID 24242459 {National Center for Biotechnology Information. PubChem Compound Summary for CID 24242459, N,2-diphenylmorpholine-4-carboxamide. https:// pubchem.ncbi.nlm.nih.gov/compound/N_2-diphenylmorpholine-4-carboxamide. Accessed
April 14, 2026, create date February 29, 2008},
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{a compound of instant formula (II),
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wherein
R1 = unsubstituted aryl (i.e., phenyl);
R3 = hydrogen; and
R4 = aryl (i.e., phenyl)};
the compound of PubChem CID 56873089 {National Center for Biotechnology Information. PubChem Compound Summary for CID 56873089, 2-(4-chlorophenyl)-N-phenylmorpholine-4-carboxamide. https://pubchem.ncbi.nlm.nih.gov/compound/56873089. Accessed April 14, 2026, create date March 30, 2012},
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{a compound of instant formula (II),
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wherein
R1 = substituted aryl (i.e., 4-chloro-phenyl);
R3 = hydrogen; and
R4 = aryl (i.e., phenyl)};
the compound of PubChem CID 110364021 {National Center for Biotechnology Information. PubChem Compound Summary for CID 110364021, 2-(4-ethylphenyl)-N-phenylmorpholine-4-carboxamide. https://pubchem.ncbi.nlm.nih.gov/compound/2-_4-ethylphenyl_-N-phenylmorpholine-4-carboxamide. Accessed April 14, 2026, create date January 18, 2016},
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{a compound of instant formula (II),
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wherein
R1 = substituted aryl (i.e., 4-ethyl-phenyl);
R3 = hydrogen; and
R4 = aryl (i.e., phenyl)};
and
the compound of PubChem CID 121134696 {National Center for Biotechnology Information. PubChem Compound Summary for CID 121134696, 2-(3,5-dichlorophenyl)-N-phenylmorpholine-4-carboxamide. https://pubchem.ncbi.nlm.nih.gov/compound/121134696. Accessed April 14, 2026, create date June 20, 2016},
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{a compound of instant formula (II),
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wherein
R1 = substituted aryl (i.e., 3,5-dichloro-phenyl);
R3 = hydrogen; and
R4 = aryl (i.e., phenyl)}.
Each of the above cited prior art disclose at least one compound that is embraced by the instant currently amended claimed invention as shown above. Therefore, each of the above cited prior art anticipates the instant currently amended claimed invention.
Note to Applicant: Not every piece of prior art found in the database search or class/subclass search which would anticipate and/or render obvious the instant claimed invention under examination has been applied against the instant currently pending claims under examination. See MPEP §904.03.
Allowable Subject Matter
The elected species, indicated above, is allowable over the prior art of record.
Claims 27-29 and 37 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 33, 34 and 41 are allowed over the prior art of record.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Laura L. Stockton
(571) 272-0710.
The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time.
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 acting supervisor,
James Alstrum-Acevedo can be reached on 571/272-5548. 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). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620
Technology Center 1600
April 14, 2026
Book XXVIII, page 245
Prosecution Insights