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 .
FINAL ACTION
Priority
Instant application 17/923,875 filed on 11/07/22 claims benefit as follow:
CONTINUING DATA:
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Status of the Application
The amendment filled on 03/11/2026 have been entered.
Claims 4, 6, 7-11, 13-17 and 21-23 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/19/2026, 10/15/2025, 10/07/2025, 09/04/2025, 01/17/2025, 11/13/2024, 11/12/2024, 11/06/2023, 05/26/2023 were in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Arguments/Amendments
The amendment filled on 03/11/2026 have been entered.
Applicant’s amendment overcome all rejections of record; therefore, all rejections of record are withdrawn.
However, Applicant’s amendment necessitated new grounds of rejection presented in this office action.
Election/Restrictions
Claims 11, 13-17 and 21-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/13/2025.
Regarding species election, Applicant elected without traverse Example 25 in the reply filed on 10/13/2025.
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Species Election
A careful review of the prior art has indicated that elected species is free of the prior art. A claim directed to the elected species in independent form would be free of the prior art.
The examiner has moved onto alternative species recited in the instant claim 4, and subsequent examination is based on this species expansion.
The expended species is instant example 3, recited in instant claim 4:
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It should be noted that the above compound has been entered to STN on 24 Aug 1990:
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Further, it should be noted that the above compound is also known as N-[3-( 4-Fluorophenyl)-propyl]-1-deoxynojirimycin (see EP-0350012-A2, Table 5).
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 (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.
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.
Claims 4, 6, 7, 8, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP-0350012-A2, evidenced by STN (RN 128985-12-6, entered to STN 24 Aug 1990).
EP-0350012-A2 discloses antiviral compositions comprising N-[3-( 4-Fluorophenyl)-propyl]-1-deoxynojirimycin (see Table 5 on page 8):
As evidenced by STN, N-[3-( 4-Fluorophenyl)-propyl]-1-deoxynojirimycin has the following structure:
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Regarding instant claims 6-9, it should be noted that the instant claims are directed to GBA2 inhibitors.
However, chemical compound inherently possesses its properties. Since EP-0350012-A2 teaches the same structure as recited by the instant claims the properties recited in instant claims 6-9 are necessarily present (see also MPEP § 2112).
Regarding instant claim 10, EP-0350012-A2 teaches pharmaceutical composition comprising the compound in a combination with a pharmaceutically acceptable carrier (see page 4, lines 15-18):
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Since the teachings of EP-0350012-A2 meet all the limitations of instant claims, the instant claims are anticipated.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 IZABELA SCHMIDT whose telephone number is (703)756-4787. The examiner can normally be reached Monday - Friday from 9 am to 5 pm.
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, Clinton A Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/I.S./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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