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 1-11 and 20 are pending in the instant application. Claims 1, 2, 6, 8, 9, and 20 are rejected. Claims 3-5, 7, 10, and 11 are objected.
Response to Amendment and Arguments/Remarks
The amendment and arguments/remarks filed on January 21, 2026 have been fully considered and entered into the application. With regards to the 35 U.S.C. 112(b) rejection, Applicant argues that “Applicant amends, not only claim 1, but all claims in which the stated issues have been identified, by deleting the noted terms.” This argument in view of the amendment is found to be partially persuasive. The broad recitation of “aryl” followed by “phenyl or benzyl,” which is a narrower statement of the limitation, is still present in amended claims 1 and 2 (see lines 1 and 26 on the second page of claims). Therefore, the rejection is maintained (but altered slightly) and described below. With regards to the 35 U.S.C. 102(a)(1) as being anticipated by Tuncbilek et al., Applicant argues that “Applicant amends independent claim 1 to recite: ‘R3 is selected from the group consisting of nothing, H, alkyl, cyclopropyl…’ By so doing, the claims now exclude the compound set forth in the rejection, wherein R3 is cycloalkyl.” This argument is not found to be persuasive because in amended claim 1, “C3-C7 substituted or unsubstituted cycloalkyl” still remains as an option for R3 (see page 2 of the claim, line 12), which would include unsubstituted C5 cycloalkyl. Therefore, the rejection is maintained (but altered slightly) and described below. It is noted that even if the claim was amended to limit R3 to include only cyclopropyl as a cycloalkyl, prior art is present. See Kelley et al. (J. Med. Chem. 1997, 40, 3207-3216) which discloses the compound 62 (see Table 2 on page 3209), which anticipates a compound of the claims wherein X is N; Y is C-R4 wherein R4 is H; W is N; the bond between X-Y is a double bond; the bond between Y-W is a single bond; R3 is cyclopropyl; R1 is H; and R2 is cyclopropyl.
Maintained Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 6, 9, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation of “aryl” followed by “phenyl or benzyl,” which is a narrower statement of the limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. This rejection can be overcome, for example, by deleting either the broad recitation or the narrower statement of the limitation.
Maintained 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.
Claims 1, 2, 6, 8, 9, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tuncbilek et al. (Bioorg. Med. Chem. 17 (2009) 1693-1700).
Tuncbilek et al. discloses the compound 29, for example, (see Scheme 2 on page 1694) and a composition thereof (see 4.2.1. Sample preparation on page 1699) which anticipates a compound of the claims wherein X is N; Y is C-R4 wherein R4 is H; W is N; the bond between X-Y is a double bond; the bond between Y-W is a single bond; R3 is C5 unsubstituted cycloalkyl; R1 is H; and R2 is (CH2)Z-(CR5R6)V-R7 wherein Z is 2, V is 0 and R7 is unsubstituted cyclohexenyl and a composition thereof.
Claim Objections
Claim 3 is objected to because of the following informalities: the word “or” is missing between “monounsaturated cyclohexyl” and “2-(1-cyclohexenyl).” Also, “R1 is H and R2 is (CH2)Z-(CR5R6)V-R7, wherein Z is 1, V is 1, R5 is CH3, R6 is CH3, and R7 is monosaturated cyclohexyl, 2-(1-cyclohexyl).” appears twice in the claim. Appropriate correction is required.
Claims 3-5, 7, 10, and 11 are objected to for depending on a previous rejected claim.
Conclusion
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 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 KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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, James Alstrum-Acevedo can be reached at 571-272-5548. 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.
/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622
Prosecution Insights