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 .
Status of the Claims
Claims 1 – 18 are pending.
Claims 1 and 5 are rejected.
Claims 2 – 4 and 6 – 18 are withdrawn
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1 – 11, in the reply filed on November 5, 2025 is acknowledged. Applicant further specifically elect the compound CCF1172:
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The compound CCF1172 reads on the structure of formula (I)
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, wherein:
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Examination: As noted above, Applicant state that the compound CCF1172 reads on the structure of formula (I), wherein the moiety A-R2 is halogen. Emphasis added. However, the claims recite the limitation:
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According to the limitation, A is specifically C1-C5 alkylene and one or more of the methylene groups can be optionally independently replaced with the above groups. The claims do not specifically recite any limitations, wherein A is absent or a halogen group (in which case, R2 would be absent), in order to encompass the scope of the elected compound CCF1172. The specification also does not teach or provide sufficient support for said limitations of the compound of formula (I). Therefore, none of the claims read on Applicant’s elected species. Examination of the Markush-type claim has been extended to the scope of formula (I), that constitutes a proper Markush group wherein A is C1 alkylene and R2 is absent, such that the compounds share a naphthalenyl-NH-C(O)-phenyl core, pursuant to Federal Register, Vol. 76, No. 27, dated February 9, 2011, page 7166 (middle column):
“Under principles of compact prosecution, the examiner should also require the applicant to elect a species or group of indistinct species for search and examination (i.e., an election of species). If the examiner does not find the species or group of indistinct species in the prior art, then the examiner should extend the search to those additional species that fall within the scope of a permissible Markush claim. In other words, the examiner should extend the search to the species that share a single structural similarity and a common use. The improper Markush claim should be examined for patentability over the prior art with respect to the elected species or group of indistinct species…within the scope of a proper Markush claim.”
Subject matter not embraced by the elected embodiment or the scope searched is therefore withdrawn from further consideration. Claims 2 – 4 and 6 – 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/ species, there being no allowable generic or linking claim.
Priority
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Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 31, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1 and 5 are objected to because of the following informalities:
Claim 1, page 39, line 4: The limitation “A is selected from C1-C5 alkylene wherein one or more…” is grammatically incorrect because it recites alternative language without additional alternate groups and missing proper punctuation (comma (,)). In order to overcome the objection, Applicant may amend the limitation as follows: “A is1-C5 alkylene, wherein one or more…”.
Claim 1, page 39, line 7: The limitation “B is selected from H, C1-C5 alkylene wherein one or more…” is grammatically incorrect because it does not recite proper language and conjunction (comma (,)) for the groups of alternatives. In order to overcome the objection, Applicant may amend the limitation as follows: “B is selected from H, and C1-C5 alkylene, wherein one or more…”.
Claim 5, line 1 of the claim: The preamble limitation “The compound of claim 1 wherein…” is grammatically improper because it does not recite proper punctuation (comma (,)). In order to overcome the objection, Applicant may amend the limitation as follows: “The compound of claim 1, wherein…”.
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.
Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry RN 1036456-49-1 (Entered STN date: July 27, 2008).
CAS Registry RN 1036456-49-1 teach the compound as presented below:
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. See, page 1.
The prior art anticipates the instant claims as presented below:
Claims 1 and 5, directed to a compound having the structure of formula (I):
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, wherein:
Z is NH-C(O),
R1, R4 and B are each H,
R3 is absent,
A is C1 alkyl, and
R2 is absent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sagar Patel whose telephone number is (571)272-1317. The examiner can normally be reached Monday - Friday: 9am to 5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L. 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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/Sagar Patel/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626