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 .
Claims 1-3, 5, 6, 8, 15, 17, 25, 29, 30, 34, 36, 38, 43, 49, 52, 56 and 64 are currently pending in this Application. Claims 3, 56, and 64 are withdrawn from further consideration by the Examiner, 37 C.F.R. § 1.142(b), as being drawn to a non-elected invention. The withdrawn subject matter is patentably distinct from the elected subject matter as it differs in structure and element and would require separate search considerations.
Information Disclosure Statement
Applicant’s Information Disclosure Statement, filed on 02/17/2023 has been considered. Please refer to Applicant’s copies of the 1449 submitted herewith.
Response to Restriction
Applicants’ election, without traverse, the invention of Group I, claims 1-2, 5, 6, 8, 15, 17, 25, 29, 30, 34, 36, 38, 43, 49 and 52, drawn to a product of Formula,
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and the specific compound,
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, in response filed 07/28/2025 is acknowledged.
Therefore, the restriction requirement is considered proper and is maintained.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a petition under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
The scope of the invention of the elected subject matter is as follows:
In accordance with the MPEP, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species and the claims drawn to the elected species are allowable, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
The elected species was found to be free of prior art and therefore, the scope of the examined subject matter was expanded to include products of Formula I,
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, depicted in claim 1, wherein:
RN is H; R1 and R2 are each independently H, halo, CN, C1.6 haloalkyl;R3 is H or C1.6 alkyl; R4 is Co-6 alkylene-C3-6 cycloalkyl, optionally substituted with one or more R5; and each R5 is as defined. As result of the election and the corresponding scope of the invention identified supra, the remaining subject matter of claims1-2, 5, 6, 8, 15, 17, 25, 29, 30, 34, 36, 38, 43, 49 and 52, are withdrawn from further consideration pursuant to 37 CFR 1.142 (b) as being drawn to non-elected inventions. The withdrawn compounds contain varying functional groups, which are chemically recognized to differ in structure and function from the elected variables. For example R1 could be heterocycloalkyl group, which is different from the elected Co-6 alkylene-C6-10 aryl group. This recognized chemical diversity of the functional groups can be seen by the various classifications of these functional groups in the CPC classification system. Therefore the subject matter which are withdrawn from consideration as being non-elected subject differ materially in structure and composition and have been restricted properly a reference which anticipated but the elected subject matter would not even render obvious the withdrawn subject matter and the fields of search are not co-extensive.
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.
Claims 1, 2, 5, 6, 15, 25, 29, 31, 34, and 36 are rejected, under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 6,242,443 to Pirrote et al.
The elected species was found to be free of prior art and therefore, the scope of the examined subject matter was expanded to include products of Formula I,
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, depicted in claim 1, wherein:
RN is H or C1-6 alkyl; R1 and R2 are each independently H, halo, CN, C1.6 haloalkyl; R3 is H or C1-6 alkyl; R4 is Co-6 alkylene-C6-10 aryl, optionally substituted with one or more R5; and each R5 is as defined. Pirrote et al teaches 1,2,4-benzothiadiazine products that read directly on species of Applicants’ instantly claimed genus of products according to formula (I) wherein the variables are as defined above. Please refer to the following compounds:
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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.
Claims 1, 2, 5, 6, 15, 25, 29, 31, 34, 36 and 52 are rejected, under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 6,242,443 to Pirrote et al.
The elected species was found to be free of prior art and therefore, the scope of the examined subject matter was expanded to include products of Formula I,
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, depicted in claim 1, wherein:
RN is H or C1-6 alkyl; R1 and R2 are each independently H, halo, CN, C1.6 haloalkyl;R3 is H or C1.6 alkyl; R4 is Co-6 alkylene-C6-10 aryl, optionally substituted with one or more R5; and each R5 is as defined. Pirrote et al teaches 1,2,4-benzothiadiazine products that read directly on species of Applicants’ instantly claimed genus of products according to formula (I) wherein the variables are as defined above. Please refer to the following compounds:
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Claim Objections
Claims 38-49 are objected to for depending on a rejected base claim.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kamal A Saeed whose telephone number is (571) 272-0705. The examiner can normally be reached on M-F 7:30 AM- 3:30 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, Mr. Joseph K. McKane, can be reached at (571) 272-0699. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Communication via Internet e-mail regarding this application, other than those under 35 U.S.C. 132 or which otherwise requires a signature, may be used by applicant and should be addressed to [Symbol font/0x5B]joseph.mckane@uspto.gov[Symbol font/0x5D]. All Internet e-mail communications will be made of record in the application file. PTO employees will not communicate with applicant via Internet e-mail where sensitive data will be exchanged or where there exists a possibility that sensitive data could be identified unless there is of record an express waiver of the confidentiality requirements under 35 U.S.C. 122 by the applicant. See the Interim Internet Usage Policy published by the Patent and Trademark Office Official Gazette on February 25, 1997 at 1195 OG 89.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or public PAIR only. For more information about the pair system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197.
/Kamal A Saeed/
Primary Examiner, Art Unit 1626