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
This office action is in response to applicant’s reply filed on August 13, 2025.
Restrictions/Elections.
Applicant’s election without traverse of Group I (Claims 1-2, 4-6, 8 and 10) in the reply filed on August 13, 2025, is acknowledged.
Applicant election of the following species:
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is also acknowledged.
Status of Claims
Claims 1-2, 4-6, 8, 10-12 and 14-23 are currently pending and are the subject of this office action.
Claims 11-12 and 14-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 13, 2025.
Claims 1-2, 4-5 and 10 are further withdrawn since they do not encompass the elected species:
NOTE: Applicant responded on 08/13/25 that the elected species reads on claim 10. However, claim 10 depends on claim 1, not from claim 8, as such it is not under examination.
Claims 6 and 8 are presently under examination.
Priority
The present application is a 371 of PCT/IB2021/054224 filed on 05/17/2021 which claims priority to provisional application No. 63/026,373 filed on 05/18/2020.
Claim Objections
Claim 8 is objected to because of the following informalities: Claim 8 depends from claims 1 to 7. However, claims 3 and 7 are cancelled. Appropriate correction is required.
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.
NOTE: in the response dated 08/13/2025 Applicant made the following election:
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However, the first compound of claim 6 is:
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So, for the purpose of prior art search it is going to be assume that the first compound of claim 6 is the compound Applicant elected.
Claim(s) 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maloney et. al. (US 2018/0273488).
For claim 6, Maloney teaches the following compound:
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Compound 415 on page 220.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maloney et. al. (US 2018/0273488).
Maloney teaches all the structural limitations of claim 8 (See 102(a)(1) above, except for the compound being a solvate. However, making solvates of known compounds is routine experimentation for the skilled in the art, thus resulting in the practice of claim 8 with a reasonable expectation of success.
Conclusion
No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCOS L SZNAIDMAN whose telephone number is (571)270-3498. The examiner can normally be reached Flexing M-F 7 AM-7 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, Amy L. Clark can be reached on 571 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCOS L SZNAIDMAN/
Primary Examiner, Art Unit 1628
August 14, 2025.