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 1-43 are pending in the instant application. Claims 6-8 and 24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected subject matter. The withdrawn subject matter is patentably distinct from the elected subject matter as it differs in structure and element and would require separate search considerations. In addition, a reference which anticipates one group would not render obvious the other. Claims 1, 4, 5, 9-16, 18-21, 26, 28, 34, 35, 40, and 43 are rejected. Claims 2, 3, 17, 22, 23, 25, 27, 29-33, 36-39, 41, and 42 are objected.
Information Disclosure Statements
The information disclosure statements filed on March 10, 2023, September 26, 2023 and December 3, 2025 have been considered and signed copies of 1449 are enclosed herewith.
Election/Restrictions
Applicant’s election without traverse of the species
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140
232
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in the response filed on December 3, 2025 is acknowledged. The restriction requirement is still deemed proper and is hereby made final.
The examiner will follow the guidelines of MPEP 803.02 wherein once a species is elected, it is examined for compliance with all applicable statutes for patentability and if compliance is found, then the examination is expanded to a reasonable number of elected species to determine whether they also comply with the statute. The examiner will determine whether the entire scope of the claims is patentable according to MPEP 803.02.
Applicant's elected species appears allowable over the prior art of record. Therefore, according to MPEP 803.02: should no prior art be found that anticipated or renders obvious the elected species, the search of the Markush-type claim will be extended. If prior art is found that anticipated or renders obvious the Markush-type claim with respect to a nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration. The search of the Markush-type claim has been extended to the non-elected species wherein:
Ring A or Ring B is thiazolylene; Ring C is phenylene; L is a bond; X is -CR7R8-; and the rest of the variables are as defined in the claims.
As prior art has been found which anticipates the above identified nonelected species, the Markush-type claims are rejected as follows and the subject matter of the claims drawn to nonelected species held withdrawn from consideration. Claims 1-5, 9-23 and 25-43 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since art was found on the nonelected species, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
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)(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, 4, 5, 9-16, 18-21, 26, 28, 34, 35, 40, and 43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 5,977,108.
U.S. Patent No. 5,977,108 discloses heterocycle-containing carboxylic acid derivatives represented by formula (I), or physiological acceptable salts thereof (see abstract and columns 1 and 2) and pharmaceutical compositions thereof (see columns 19 and 20), such as the compound 4-[4-[2-[2-(5,6-Diisopropylpyrazinyl)]thiazolyl]]benzoic acid (see Example 52 on column 50) which anticipates a compound of Formula (I) of the claims wherein L is a bond; Ring C is phenylene; Ring B is thiazolylene; Ring A is pyrazinylene; m and n are 0; o is 1; R3 is isopropyl; X is -CR7R8- wherein R7 and R8 are methyl; Y is a bond; and Z is Z1 wherein Z1 is H; and a pharmaceutical composition thereof.
Claim Objections
Claims 2, 3, 17, 22, 23, 25, 27, 29-33, 36, 37, 41, and 42 are objected for depending on a previous rejected claim. However, even if the claims are amended to be in independent form, they would still not be in condition for allowance because they contain non-elected subject matter. In other words, the subject matter or species which are not embraced by the elected embodiment or the above identified nonelected species have been withdrawn from further consideration.
Claims 38 and 39 are objected to for containing non-elected subject matter (e.g., compounds 2 and 3 in claim 38). See above.
Conclusion
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.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622
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