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 .
This is a Final Office Action.
Election/Restrictions
Applicant's election without traverse of Group (I) in the reply filed on September 2, 2025 is acknowledged. Group (I), drawn to compounds of formulas (If), (Ib) and (Ie), embraced by claims 1-5, 9, 10, 14-21, 23-26 and 28-30 was elected by Applicant. Applicant has not pointed to any errors in the Examiner’s analysis of the different inventions. The requirement is still deemed proper and is therefore made FINAL.
Applicant elected without traverse the following species:
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213
221
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and indicated claims 1-5, 9, 10, 14-18, 30, 32, 46 and 47 read on said species. However, Group (I) is limited to claims 1-5, 9, 10, 14-21, 23-26, 28-30 and 47.
The elected species was searched and not found but is rejected under a NSDP section. Thus, the search was expanded.
Claims 1-5, 9, 10, 14-21, 23-26, 28-30, 32, 46 and 47 are pending and claims 1-5, 9, 10, 14-18, 30 and 47 are under examination. Claim 47 is a new claim. Claims 19-21, 23-26, 28 and 29 are withdrawn based on the species election and claims 32 and 46 are withdrawn based on the lack of unity.
Specification
The objection to the abstract of the disclosure is withdrawn based on the amendments.
Claim Rejections - 35 USC § 112
The rejections of claims 17 and 18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the phrases, “in the form of a mixture” and “and enantiomers thereof, and mixtures of enantiomers thereof, including racemic mixtures, and pharmaceutically acceptable salts and solvates,” are withdrawn based on the amendments.
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.
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) 3, 4, 9, 10 and 14-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aurora Fine Chemicals (Registry number 1903848-39-4, May 5, 2016, downloaded on June 6, 2025 from the STNext search report).
The species shown below is found in the chemical catalog of Aurora Fine Chemicals, see the search report
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430
910
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Thus, said claims are anticipated.
Applicant traverses by outlining the difference based on the point of attachment of the fused ring A, see below:
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205
253
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179
135
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236
286
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.
Claim 3 has been amended to states, “wherein the wavy line denotes attachment of ring A to the ring containing N and Y,” see page 7. However, this is not sufficient to overcome the rejection. The claim does indicate which wavy line is attached to the Y variable of formula (Ib).
Therefore, the rejection is maintained.
Double Patenting
The rejection of claims 1-5, 9, 10, 14-18, 30 and 47 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 28-31 of copending Application No. 18699825 in view of Patani, et al. (Chem. Rev., 96, 1996, pp. 3147-3176) is withdrawn based on the cancellation of claims 28-31 in the copending application.
Conclusion
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 SUSANNA MOORE whose telephone number is (571)272-9046. The examiner can normally be reached Monday - Friday, 10:00 am to 7:00 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, Jeffrey Murray can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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