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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1 – 12, and 14) drawn to an aminoaromatic compound represented by the following Chemical Formula 1 or a pharmaceutically acceptable salt thereof: [Chemical Formula 1]
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wherein R1-3, Ar, and n are defined and the species election of
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in the reply filed on September 4th, 2025 is acknowledged.
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II (a method of preventing or treating neurodegenerative diseases), there being no allowable generic or linking claim. Moreover, claims 3, 5, and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species wherein instant R3 is Ha1 which is a halogen. Election was made without traverse in the reply filed on September 4th, 2025.
Claims 1 – 14 are currently pending in the application. However, due to a restriction requirement, claims 3, 5, 7, and 13 are withdrawn from further consideration and claims 1 – 2, 4, 6, and 8 – 12, and 14 are being examined on the merits herein. Upon initial search the elected species of
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free of the prior art; hence, the search was expanded to rejoin chemical compound species wherein instant n = 1; instant R3 = OCH3; instant Ar is unsubstituted phenyl; and both instant R1 and instant R2 are H. However, any species that does not meet the above structural recitation is still withdrawn; thus, the species election requirement set forth in the office action dated September 4th, 2025 is still maintained.
Hence claims 1 – 2, 4, 6, and 8 – 12, and 14 are still being examined on the merits herein
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18/036847, filed on May 12th, 2023. Now while the applicant as submitted a certified copy of the foreign priority documents; these copies are not English translations. Therefore, the instant application has the priority date of November 12th, 2021.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
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 8 is 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.
Claim 8 recites the aminoaromatic compound or the pharmaceutically acceptable salt thereof of claim 4, wherein the aminoaromatic compound is any one selected from a group of structures. However, claim 8 is missing commas between each of the chemical structures, and a conjunction between the last two structures. Thus the claim recites a non-closed list of alternatives or Markush grouping. As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of whether the claim requires any of the listed compounds plus any unlisted compounds or if the claim requires only the compounds recited in claim 8. Therefore, given that the uncertainty of the claim 8; claim 8 is being rejected under 35 U.S.C. 112(b). Moreover, given the uncertainty of claim 8 the broadest reasonable interpretation will be used; thus since this is an open Markush group any compound that meets the limitation of claim 1 will also meet the limitation for claim 8.
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, 4, 6, and 8 – 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by German Patent Application Number DE 10237932 A1 to Georg et. al. (herein after Georg’932; cited on the IDS dated October 30th, 2024, English translation used).
Regarding claims 1 – 2, 4, 6, and 8 – 9, Georg’932 teach 1.4.2 2-{2-[(4-Aminophenyl)amino]ethyl}anisole, dihydrochloride (claim 9) of structure
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(claims 1 and 4) (original page 17 paragraph 0113) wherein instant Ar is an unsubstituted phenylene (claim 2); instant n = 1; instant a = 0 (claim 6 and 8); instant R1 and R2 are H; instant R3 = OCH3 (claims 1 and 4). Moreover, Georg’932 teach that the compounds of the disclosure can be used in compositions that contain suitable aqueous, alcoholic or aqueous-alcoholic carriers (translation page 67 paragraph 0096) which can include ethanol (translation page 68 paragraph 0097).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 10 – 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over German Patent Application Number DE 10237932 A1 to Georg et. al. (herein after Georg’932; cited on the IDS dated October 30th, 2024, English translation used).
The teachings of Georg’932 as they relate to claim 1, from which claims 10 – 12, and 14 depend, are given previously in this office action and are fully incorporated here.
However, Georg’932 fails to explicitly teach a pharmaceutical composition (claims 10 – 12) nor a health functional food (claim 14).
Nevertheless, Georg’932 does teach that the compounds of the disclosure can be used in compositions (claims 10, 12, and 14) that contain suitable aqueous, alcoholic or aqueous-alcoholic carriers (claim 11) (translation page 67 paragraph 0096) which can include ethanol (translation page 68 paragraph 0097).
Regarding claims 10, 12, and 14 limitation for a pharmaceutical composition or health functional food, “for treating or preventing neurodegenerative diseases,” this limitation is an intended use limitation and does not provide a structural limitation. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "‘extraneous’ limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. (MPEP 2111.02(II)). If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)(MPEP 2111.02(II)).
Conclusion
Claims 1 – 2, 4, 6, and 8 – 12, and 14 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAWANNA S WHITE whose telephone number is (703)756-4687. The examiner can normally be reached 7:00 am - 5:00 pm [EST] M - Th.
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/DAWANNA SHAR-DAY WHITE/Examiner, Art Unit 1627