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 Claims and Response to Amendments
The amendments filed April 23, 2026 have been acknowledged and entered. Claims 1-19 and 24-25 are pending.
Information Disclosure Statements
Acknowledgement is made of the Information Disclosure Statement filed on April 23, 2026. All references have been considered except where marked with a strikethrough.
Election/Restriction
The present examination is based on Applicant’s election of Group I (claims 1-19 and 25, drawn to a compound of Formula I) and species corresponding to Example 10 (pictured below for convenience) in the response filed November 7, 2025. Claim 24 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. The improper Markush rejection set forth in the previous office action has been withdrawn in view of Applicant amendment to the claims so that X is an imidazopyridine core. The search has thus been expanded to include the full scope of Formula (I) presently claimed.
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Withdrawn Rejections
Applicant is notified that any outstanding rejection or objection that is not expressly maintained in this Office Action has been withdrawn or rendered moot in view of Applicant’s amendments and/or
remarks.
Claim Objections
Claim 18 is objected to for being of a different scope than claims 1-17, 19 and 25. Compounds, corresponding compositions, a method of use and a process of making that are of the same scope are considered to form a single inventive concept under PCT Rule 13.1, 37 CFR 1.475(d). In the present case, claims 1-17, 19 and 25 require a compound of Formula (I) which is not required by claim 18. The claims are thus drawn to different inventive concepts and lack unity of invention. The claims should be amended to have the same scope. Failure to amend the claims consistent with the rule could result in a requirement for restriction.
Claim 18 is objected to for failing to comply with rule 1.141(a) (pasted below for convenience). Claim 18 has approximately 50 species. This number of compounds cannot be considered a reasonable number according to rule 1.141(a). In re Fressola, 22 USPQ 2nd 1828, indicates that the Examiner may reject for Applicants’ failure to follow a Rule.
Claim 18 should be amended to depend from claim 1. Failure to amend the claims consistent with the rules may result in a restriction requirement.
§ 1.141 Different inventions in one national application.
(a) Two or more independent and distinct inventions may not be claimed in one
national application, ex-cept that more than one species of an invention, not to
exceed a reasonable number, may be specifically claimed in different claims in
one national application, provided the application also includes an allowable claim
gen-eric to all the claimed species and all the claims to species in excess of one are
written in dependent form (§ 1.75) or otherwise include all the limitations of the
generic claim.
Response to Arguments
Applicant’s arguments filed April 23, 2026 have been fully considered but they are not persuasive.
Applicant argues that searching the species of claim 18 does not place an undue burden on the Examiner because they share a common alkylamino substituted imidazopyridine (page labeled 35 of remarks). This argument is not found persuasive for the reason that the species require no common formula (e.g. Formula (I)) and the species are structurally distinct and each requires a separate search.
The above objections could be overcome by amending claim 18 to depend from claim 1 and to delete those compounds which are not embraced by claim 1.
Maintained Rejections
Double Patenting
Claim 1-19 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. US12,358,915. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the patent claims.
The reasons for this rejection were set forth in the previous Office Action mailed December 23, 2025 and are incorporated herein by reference.
Response to Arguments
Applicant’s arguments filed April 23, 2026 have been fully considered but they are not persuasive.
Applicant argues the claims have now been amended such that when Z is a pyridyl group, the R10 group is a monocyclic heterocyclyl. Such a combination of groups is not disclosed in US 12,358,915 and therefore there is no overlap with this patent (page labeled 38 of response).
Examiner acknowledges that the combination of such groups is not disclosed in the patent claims; however, the rejection is maintained because the patented genus still overlaps and therefore anticipates the instant claims. For example, the patent claims are drawn to a compound, X-Y-Z, wherein
X is selected from
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;
Y is selected from
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; and
Z is selected from
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(instant claims include wherein Z is
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)
The X, Y and Z groups of the patent correspond to those presently claimed.
The rejection is still deemed proper and thus maintained.
Rejections Necessitated by Applicant Amendment
Claim Rejections - 35 USC § 112d
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 depend from claim 1 and recites a compound wherein X is
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; however, claim 1 has been amended to recite X is
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. Claim 6 does not provide any further limitation to the subject matter of claim 1. Claim 6 is therefore rejected for failing to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
No claim is allowed.
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 KEVIN MARTIN whose telephone number is (571)270-0917. The examiner can normally be reached Monday - Friday 8 am - 5 pm.
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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.
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May 15, 2026
/K.S.M./Examiner, Art Unit 1624
/BRUCK KIFLE/Primary Examiner, Art Unit 1624
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