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 .
Response to Amendment
The 2026 March 2 amendment containing claims 1-7, 9-29, 32-34, and 36-38 is considered. The objections and 35 U.S.C. 112 rejection of the non-final are overcome because the claims have been cancelled and/or recite enabled subject matter. The 35 U.S.C. 102 rejection is overcome because of the new proviso regarding variables X and Y and the ring formed with instances of examined variable R2. The provisional non-statutory double patenting rejections are overcome because the compounds in reference applications are no longer encompassed by the amended claims. A search of formula (I) is extended to compounds of the following scope: R1 is 1-methyl-morpholine; R2 is two instances of methyl substituents and two instances of H; and R3 is H; R4 is H; R5 is Cl; R6 is indazole substituted with two methyl groups; and R7 is F. As a result of the Markush type search extension, claims 3, 6, 10, and 14 are rejoined.
Claims 23, 26, and 36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2025 October 16.
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.
Claim 1-7, 9-25, 27-29, 33,34, 37, and 38 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. In a compound of formula (I) in which variable Y is N, the nitrogen ring atoms cationic, having a formal charge of plus one. The claims does not specify what corresponding anion(s) are used to counterbalance this positive charge.
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.
Claim(s) 1, 2, 15, 18, 23, and 25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LI (WO 2018218070, published 2018 November 29). Li describes compound 10G (page 194) and 11H (page 197). Both of these compounds are reactants in which the following definitions apply: R1 is 1-methyl-morpholine; R2 is two instances of methyl substituents and two instances of H; and R3 is H; R4 is H; R5 is Cl; R6 is indazole substituted with two methyl groups; and R7 is F.
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Conclusion
Claims 1-7, 9-25, 27-29, 33,34, 37, and 38 are not allowed.
The following is a statement of reasons for the indication of allowable subject matter: MARX (US 20190270743, published 2019 September 5). Marx describes the intermediate compounds (page 81, column 1; page 82, column 1; page 83, column 2; page 84, column 2; page 85, column 2; page 87, column 1; page 88, column 1; page 89, column 1; page 90, column 1; page 91, column 1; page 92, column 1l; page 93, column 1; page 94, column 2; page 95, column 2; page 96 column 2; page 98, column 2; page 100, column 1; page 101, column 1; page 102, column 1; page 104, column 1; page 105, column 2; page 111, column 1;page 112, column 2; page 166, column 2; page 168, column 2; page 205, column 1; page 206, paragraph [0901]; page 207, paragraph [0908]; page 208, column 1) in which the following examined definitions apply: R3 is H; one of R2 is CH2-CN and the remaining instances of R2 are H; R1 is substituted pyrrolidine or hexahydro‐1H‐pyrrolizine; R4, R5, and R7 are each H; X is CH; Y is N; and R6 is selected from the group consisting of 2,3-dimethylphenyl, naphthyl, [chloro, methyl, or fluoro and chloro]-substituted naphthalene. Several of the compounds are shown below. These compounds are not prior art because a [2.2.2] bridged ring system is required to be present when one of variables X and Y is N.
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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 NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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