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 . Claims 1, 3-15, 17-20, 22, 24-30 filed December 01, 2025 are currently pending. Claims 1 and 4 are independent.
Election/Restrictions
Applicant's election without traverse of a 1,2,4-triazole ring compound in the reply filed on 12/01/2025 is acknowledged.
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Secondly, Applicant's election without specifying traverse of compound 5 (PRR851 on page 22 of the specification and in Figure 3A) as shown above in the reply to the telephonic election filed on 01/14/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 4-15, 17-20 and 22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species (regarding claims 4-5, L is N NOT NH in the elected species as shown in the structure above), there being no allowable generic or linking claim. Claims 25-27 and 29-30 are also withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species (regarding claims 25-27 and 29-30, the elected R group is alkyl (isobutyl)), there being no allowable generic or linking claim.
Species election
A careful review of the prior art has indicated that the elected species (compound 5 or PRR851 is free of the prior art. A claim written in independent form directed to said compound would be allowable over the prior art. The examiner has moved on to alternative species embraced within Formula (I), such as 4-(4-bromo-2-fluorophenyly)-1-propyl-1H-1,2,4-triazol-5(4H)one and subsequent examination is based on this species expansion.
Priority
Acknowledgement is made of the national stage entry of PCT/IB2021/058131 filed 09/07/2021 which claims foreign priority to Application 2014012.5 filed 09/07/2020.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/07/2023, 10/17/2024 and 08/11/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 3, 24 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Han (US2016/0068515 filed 03/10/2016).
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Han (US2016/0068515 filed 03/10/2016) teaches compounds of Formula (IIIa) as potent GPR119 inhibitors efficacious at treating diabetes in a subject in need (abstract), [0553]-[0554], Table 1, claim 12). Embraced within said compounds of Formula (IIIa) includes Example 2 4-(4-bromo-2-fluorophenyly)-1-propyl-1H-1,2,4-triazol-5(4H)one ([0171). As shown above, Example 2 of Han reads on the following claimed limitations of claims 1, 3, 24 and 28: A is CR1 wherein R1 is fluoro, C is CR1 wherein R1 is Br, B, D and E are each CR1 wherein R1 is independently H, X is O, R is an alkyl (propyl group). Regarding Example 2, said compound reads on the limitation of claim 24 wherein the alkyl group is propyl and claim 28 wherein R1 is a halogen group selected from the group consisting of bromo and fluorine ([0171]).
Regarding the limitation wherein Example 2 of Han is capable of inhibiting a tripartite VAP-A, ORP3 and Rab7(VOR) protein complex in multicellular organisms by interfering with at least one mechanism of (a) intercellular communication, wherein the intercellular communication is mediated by receptor-ligand interaction and/or extracellular vesicles EVs; and (b) viral infection involving the transport of endocytosed biomaterials to the nucleus of recipient cells, such a limitation of the instant claims fails to patentably distinguish the instant claims over the cited prior art because such a limitation is an intended use of the composition (i.e., an intent to use the disclosed composition to interfere with mechanisms of viral infections), which does not impart any physical or material characteristics to the composition that is not already present in the cited prior art. 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 of not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.2d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 378, 42 USPQ2d 1550, 1554 and MPEP §2112.02(11). In the instant case, the cited prior art of Example 2 of Han meets each and every structural and physical limitation of the instantly claimed composition and, thus, would be reasonably expected to be capable of performing the intended use as instantly claimed, absent factual evidence to the contrary and further absent any apparent structural difference between the composition of the prior art and that of the instant claims.
Claim(s) 1, 3, 24 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aurora Fine Chemicals as evidenced by CAS REGISTRY DATABASE.
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Aurora Fine Chemicals teaches compound PRR850 as shown above, which was indexed in the CAS Registry database as compound 2182410-63-3 on 03/01/2018. Compound PRR850 reads on the following claimed limitations of claims 1, 3, 24 and 28: A is CR1 wherein R1 is H, C is CR1 wherein R1 is Cl, B, D and E are each CR1 wherein R1 is independently H, X is O, R is an alkyl (propyl group). Said compound reads on the limitation of claim 24 wherein the alkyl group is propyl and claim 28 wherein R1 is a halogen group selected from the group consisting of chloro.
Regarding the limitation wherein compound PRR850 of Aurora Fine Chemical is capable of inhibiting a tripartite VAP-A, ORP3 and Rab7(VOR) protein complex in multicellular organisms by interfering with at least one mechanism of (a) intercellular communication, wherein the intercellular communication is mediated by receptor-ligand interaction and/or extracellular vesicles EVs; and (b) viral infection involving the transport of endocytosed biomaterials to the nucleus of recipient cells, such a limitation of the instant claims fails to patentably distinguish the instant claims over the cited prior art because such a limitation is an intended use of the composition (i.e., an intent to use the disclosed composition to interfere with mechanisms of viral infections), which does not impart any physical or material characteristics to the composition that is not already present in the cited prior art. 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 of not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.2d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 378, 42 USPQ2d 1550, 1554 and MPEP §2112.02(11). In the instant case, the cited prior art of compound PRR850 of Aurora Fine Chemical meets each and every structural and physical limitation of the instantly claimed composition and, thus, would be reasonably expected to be capable of performing the intended use as instantly claimed, absent factual evidence to the contrary and further absent any apparent structural difference between the composition of the prior art and that of the instant claims.
Conclusion
In view of the rejections set forth above, no claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE W KOSTURKO whose telephone number is (571)270-5903. The examiner can normally be reached M-F 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON A BROOKS can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE W KOSTURKO/Primary Examiner, Art Unit 1621