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 1-10, 13-20 and 22-23 are pending. Claims 1-10, 13-18 and 23 are withdrawn. Claims 19-20 and 22 are rejected.
Response to Amendment/Arguments
The amendment filed September 9, 2025 is compliant with the requirements of 37 CFR 1.121(c), accordingly the amendment has been entered. Applicant’s arguments have been fully considered and are addressed below:
35 USC § 102 Rejection
The anticipation rejection of claims 19-20 and 22 over Burrow et al. US 4,322,429A, as evidenced by CAS Registry No. 82361-16-8, has been overcome by the narrowing the scope of R2 to exclude aryl groups; thereby circumventing Burrow’s compounds of the formula
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, such as
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448
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, wherein Burrow’s R2 is aryl-substituted isoxazole, wherein the aryl corresponds to instant R2.
Election/Restrictions
Examination of the elected invention was extended to non-elected species in accordance with the MPEP 803.02. The scope of formula (IV),
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, wherein Z4, Z5 and Z6 are CH or C-R27, and R23, R24 and R27 are selected from hydrogen, was found unpatentable over the prior art. Since art was found on a nonelected species, subject matter not embraced by the elected embodiment or the above-identified non-elected subgenus is therefore withdrawn from further consideration. Claims 1-10, 13-18 and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
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 19-20 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyake et al. J. Pest. Sci, 2013, 38, 96-104.
Miyake dissolved compound 44 in DMSO (2,500 mg/L) for pesticidal activity testing. See, e.g., p. 97, p. 101 (section 2) and Table 2.
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This disclosure anticipates the compound of Formula IV,
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, wherein Y2 is O, W2 is N, Z4, Z5 and Z6 are CH, R22 is methyl (unsubstituted alkyl), R23 and R24 are H, as embraced by claim 19.
The DMSO solution comprising the compound anticipates the composition of claim 20, since DMSO is a well-known pharmaceutically acceptable excipient, according to Official Notice.
The DMSO solution also anticipates the composition of claim 22, requiring the compound be present in “an amount effective” for treating one of the claimed diseases. According to the specification:
“an ‘effective amount’ of a compound of the present technology refers to an amount of the compound that alleviates, in whole or in part, symptoms associated with a disorder or disease, or slows or halts of further progression or worsening of those symptoms, or prevents or provides prophylaxis for the disease or disorder in a subject at risk for developing the disease or disorder.” Para. 98.
The specification further explains that “[a] therapeutically effective amount of a compound of the present technology may vary depending upon the route of administration and dosage form. Effective amounts of such compounds typically fall in the range of about 0.01 up to about 100 mg/kg/day…” Para. 114. Since the 2,500 mg of the compound is present in 1L of DMSO, this solution would provide a PHOSITA with ample compound (i.e., effective amounts) for treating the claimed diseases.
Allowable Subject Matter
The elected species
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is allowable over the prior art. The closest art was discussed on pp. 4-5 of the Office Action mailed June 11, 2025.
Conclusion
Claims 19-22 are rejected.
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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA L AGUIRRE whose telephone number is (571)272-5592. The examiner can normally be reached 10 am-6 pm MST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY H MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA L. AGUIRRE/ Primary Examiner, Art Unit 1626
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