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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/8/2026 has been entered.
Status of the Claims
Claims 1-2 and 6-19 are pending. Claims 8-13 and 15-19 are withdrawn. Claims 6 and 7 are objected to. Claims 1-2 and 14 are rejected.
Response to Arguments/Amendments
Applicant’s amendments and remarks from 4/9/2026 do not address the objection to claim 6 and it is maintained below.
The previous 102 rejection has been overcome by amendment (particularly the addition of the “R4” definition to claim 1). Consequently, Applicant’s 4/9/2026 remarks regarding this rejection will not be addressed. However, a novel 102 rejection is made below, as necessitated by amendment.
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.
(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.
Claim(s) 1, 2, and 14 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Berg et al. (WO2005027823).
Regarding instant claim 1, Berg teaches the following compound in claim 11 (see p. 111, 8th compound down):
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26
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, which is drawn to the following structure:
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575
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, which is embraced by a compound of instant formula (II):
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, wherein R3 = H and R4 =
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. 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 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.
Closest Prior Art/Allowable Section
The closest prior art to claim 6 is Berg et al. (WO2005027823), described under the 102 rejection supra. However, Berg et al. does not teach or render obvious the individual species of instant claim 6.
Claim 7 is 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.
The closest prior art to claim 7 is Berg et al. (WO2005027823), described under the 102 rejection supra. Berg teaches pharmaceutical formulations of instant claims 1-10 (see claim 12) but not claim 11. Therefore, Berg et al. does not provide motivation nor render obvious instant claim 7.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Clark can be reached at 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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/MEGHAN C HEASLEY/Examiner, Art Unit 1626
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