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 .
Status of the Claims
Claims 1-2 and 6-19 are pending. Claims 8-13 and 15-19 are withdrawn. Claims 1-2, 6-7, and 14 are rejected.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-7 and 14) and the species of 9j:
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189
476
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, which is embraced by a compound of instant Formula I:
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183
332
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, wherein R1 =
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78
106
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; R2 =
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82
97
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; R3 = methyl, in the reply filed on 8/11/2025 is acknowledged.
Claims 1-2, 6-7 and 14 (claims 3-5 have been cancelled as of 12/12/2025) read on the elected species and are therefore under examination. As per MPEP 803.02, “Following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability.” The elected species is allowable over the prior art. The search was expanded and prior art was found on the non-elected species rejected under 35 USC 102 below.
Claims 8-13 and 15-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Response to Amendments/Arguments
Applicant’s arguments and amendments, filed 12/12/2025, with respect to the rejection(s) and objections of claim(s) 1-7 and 14 (and objections to drawings) under 112b and 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of objection and rejection is made below, as necessitated by amendment. Because the 12/12/2025 amendments have overcome all previous objections and rejections, Applicant’s 12/12/2025 remarks will not be addressed.
Claim Objections
Claim 6 is objected to because of the following informalities: Line 2 should read “from the group consisting of”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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(s) 1-2, 6-7, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1790285-33-4 (which entered the STN database on 6/28/2015).
Regarding instant claims 1 and 6, CAS Registry No. 1790285-33-4 is drawn to the following structure:
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141
299
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, which is embraced by a compound of instant Formula II, wherein R1 =
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79
78
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and R3 = -CH3. CAS Registry No. 1790285-33-4 is also identical to the bottom right compound on p. 6 of claim 6. Regarding instant claim 2, the prior art compound is inherently proficient of achieving the claimed capabilities because it has the same structure as claimed.
Regarding instant claim 7, which is drawn to a composition comprising the compound, the CAS Registry entry includes predicted properties including mass and molar solubilities at varying pH values. MPEP 2131.02(III) states:
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015).
In this situation, a person having ordinary skill in the art in viewing the properties of the Registry entry would at once envisage a composition with the compound and water. For example, the mass solubility of 0.76 g/L (at pH 9) would convey to a PHOSITA a composition comprising 0.76 grams of the compound above in 1L of water.
Regarding instant claim 14 and “instructions for administering said compound to a patient having a disorder related to GRK5 activity”, see MPEP 2111.05(I)(B): "For example, in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864." Therefore, the instant kit is anticipated by the prior art which is embraced by a compound of instant claim 1, regardless of the inclusion of instructions.
Conclusion
Applicant’s amendments necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. 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 extension fee 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 MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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/MEGHAN C HEASLEY/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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