FINAL REJECTION
Receipt is acknowledged of Applicants' Amendments and Remarks, filed Jan. 16, 2026.
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The rejections and/or objections set forth below are either maintained or newly applied, and constitute the complete set presently applied to the instant claims.
STATUS OF THE CLAIMS
Claims 1-13 and 18-20 have been canceled.
Claims 14-15 have been amended to remove dependencies upon canceled claims.
No new claims have been added.
Claims 17, 21, and 22 stand withdrawn as drawn to nonelected inventions.
Thus, claims 14-17, 21, and 22 now represent all claims currently pending and under consideration.
INFORMATION DISCLOSURE STATEMENT
No new Information Disclosure Statements (IDS) have been submitted.
RESPONSE TO ARGUMENTS
Applicant's arguments filed Jan. 16, 2026 have been fully considered but they are not persuasive.
Applicant's amendments overcome all the rejections set forth in the non-final action dated 10/16/2025. Applicant further asserts that none of the exemplified compounds of Luithle et al. fall within the scope of claim 14 (Remarks, p. 8).
While it is acknowledged that Luithle et al. does not exemplify any compounds identical to those recited by claim 14, certain compounds of claim 14 are nonetheless obvious over Luithle et al., as detailed below.
NEW OBJECTIONS/REJECTIONS
Claim Objections
Claims 14-16 are objected to because of the following informalities:
Claim 14 recites the following compounds in duplicate:
(S)-7-(2-propoxyphenyl)-N-quinuclidin-3-yl-benzofuran-2-carboxamide; and
(R)-7-(2-propoxyphenyl)-N-quinuclidin-3-yl-benzofuran-2-carboxamide.
Appropriate correction is required.
Rejections under 35 USC §103
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 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 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Luithle et al. (USPN 10,214,524, cited in the previous action).
Luithle et al. disclose and claim compounds for the treatment and/or prophylaxis of diseases and for improving perception, concentration, learning, and/or memory, e.g., Alzheimer's disease or schizophrenia (abstract; claim 1).
In particular, Luithle et al. exemplify and claim N-[(3R)-1-azabicyclo[2.2.2]oct-3-yl]-7-[2-(methoxy)phenyl]-1-benzofuran-2-carboxamide (compound 130),
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as well as the (S)-isomer and the hydrochloride salts thereof (Examples 100, 102, 130; claim 11).
Compound 130 of Luithle et al. differs from the compounds recited by claim 14, e.g.,
((R) and (S))-7-(2-propoxyphenyl)-N-quinuclidin-3-yl-benzofuran-2-carboxamide (compound 23), and
((R) and (S))-7-(2-butoxyphenyl)-N-quinuclidin-3-yl-benzofuran-2-carboxamide (compound 21), having the structural formulae,
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in that compound 130 of Luithle et al. bears a methoxy substituent instead of propoxy or butoxy.
However, Luithle et al. exemplify compound 130 as a species of formula (Ic), having the structural formula,
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wherein A is oxygen or sulfur, E is phenylene, and R4 is C1-6-alkoxy (claim 9).
Therefore, it would have been predictable to one of ordinary skill in the art as of the effective filing date to modify the methoxy substituent of compound 130 of Luithle et al. to propoxy or butoxy to arrive at the claimed compounds with a reasonable expectation of success, because Luithle et al. explicitly disclose, teach, and suggest that the C1-alkoxy (methoxy) substituent of compound 130 can be modified to any C1-6-alkoxy, e.g., C3-alkoxy (propoxy) or C4-alkoxy (butoxy) with no loss of function.
Further, as recognized by MPEP § 2144.09,
“[N]ovel members of a homologous series of chemical compounds must possess some unobvious or unexpected beneficial properties not possessed by a homologous compound disclosed in the prior art.” We stated that novelty alone, without invention, is not sufficient to lend patentability to a claim. . . . [C]hemists understand that members of a homologous series of chemical compounds possess the same principal characteristics which vary gradually from member to member, and that knowing the chemical and physical properties of one of the members suggests the properties of the other members.” In re Norris, 179 F.2d 970, 84 USPQ 458 (CCPA 1950).
Thus, compounds which are homologues (i.e., compounds differing regularly by the successive addition of the same functional group, e.g., CH2) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See also In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
CONCLUSION
No claims are allowed.
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.
CORRESPONDENCE
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA E. TOWNSLEY whose telephone number is 571-270-7672. The examiner can normally be reached on Mon-Fri from 9:00 am to 6:00 pm (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Jeff S. Lundgren, can be reached at 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARA ELIZABETH TOWNSLEY/Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629