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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/6/2026 has been entered, as well as the amendment filed 4/30/2026.
Status of 18/158,670
Claims 1-20 are currently pending.
Priority
Instant application 18/158,670, filed 1/24/2023, claims priority as follows:
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Support for the instant claims is present in the priority document 63/302,782, and therefore the instant claims are granted the priority date of 1/25/2022.
Information Disclosure Statement
All references from the IDS submitted on 2/27/2024 and 2/6/2026 have been considered unless marked with a strikethrough.
Response to Arguments/Amendments
The amendments filed 2/6/2026 and 4/30/2026 have been entered. Claims 4 and 6 have been amended.
In the Final dated 10/31/2025, claims 4 and 6 were interpreted under “product-by-process” type limitations. The Examiner notes that the amendment to claim 4 to recite, “A compound of formula (IV), the compound comprising:” obviates that interpretation.
Claim 4 was objected to in the Final dated 10/31/2025 for a pixelated and illegible image, improper drafting, and the unclear limitation “it”. Applicant’s amendment to claim 4 overcomes this objection, and it is withdrawn.
In the Final dated 10/31/2025, claim 4 was rejected under 35 U.S.C. 112(b) for reciting a temporal feature. In response, Applicant has amended the claim to omit the limitation “when R6 is a fluoro group”, which overcomes the rejection. Thus, the rejection is withdrawn.
Claim 4 was rejected under 35 U.S.C. 102(a)(1) in the Final dated 10/31/2025. In response, Applicant has amended the instant claim to omit the limitation “fluoro”, which overcomes the rejection. Thus, the rejection is withdrawn.
However, Applicant’s amendments to the claims necessitated the new ground(s) of rejection presented in this Office Action.
Election/Restriction
Applicant’s election of Group II, claims 3-20, drawn to compounds and compositions of Formulas I and II, in the reply filed 2/14/2025 is acknowledged. Applicant’s election of the compound of the following formula:
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where R6 is a trifluoride in the reply filed 2/14/2025, is also acknowledged. The Examiner notes Figure 1A of the drawings depicts a higher quality image of the elected species:
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Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement or the election of species requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Examination will begin with the elected species. In accordance with MPEP § 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the non- elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be examined again. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during further examination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final.
In the Non-Final dated 3/19/2025, the elected species was searched and prior art was identified. Upon amendment to the claims to omit the 3F derivative of the 5-aminobenzoxazole compound, the rejection has been overcome and thus, withdrawn. The search was then expanded to the fluoro- derivative of the same 5-aminobenzoxazole compound and a 102 rejection was identified. The 102 rejection was overcome after Applicant struck through the limitation, and subsequent examination is based on the chloro- derivative of the same 5-aminobenzoxazole compound of formula (IV). The full scope of the claims has not yet been searched in accordance with Markush search practice. Claims 4, 6, 8, 10, 12, 14, 16, 18, and 20 read on the expanded species. Claims 1-3, 5, 7 ,9, 11, 13, 15, 17, and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species and/or group, there being no allowable generic or linking claim.
Claim Interpretation
Claims 6 recites an intended use after the preamble of the compounds or compositions by the terms, “having the properties of anti-inflammatory activity, inhibiting PGE2 biosynthesis and activity, and mPGES-1 activity”. The intended use of compounds is not granted patentable weight; patentability of products rests on what the product is, not what the product does. The claims are currently being interpreted as their respective compounds or compositions.
Claim Objections
Claim 18 is objected to for a minor informality. Specifically, claim 18 recites, heart disease.in a subject”, but should read, “heart disease in a subject”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 4, 6, 8, 10, 12, 14, 16, 18, and 20 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.
Claim 4 recites the limitations R3 and R4, but there are no R3’s or R4’s in the figure or recited elsewhere in the claim. Thus, the limitations are unclear and indefinite. Dependent claims 6, 8, 10, 12, 14, 16, 18, and 20 do not resolve this issue by defining variables and are therefore also rejected. Appropriate correction is required.
Claim 4 recites the limitation, “benzoic acid modification”. This term is not defined by the claim, the specification does not provide a definition or standard, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, the scope of “benzoic acid modification” is unclear. Dependent claims 6, 8, 10, 12, 14, 16, 18, and 20 do not resolve this issue by defining the term and are therefore also rejected. Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 4, 6, 10, 14, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Temiz-Arpaci (Temiz-Arpaci, O. et. al. Journal of Molecular Structure, 2021, 1245, 131084). This rejection applies to the expanded species where R6 is chloro.
The reference Temiz-Arpaci teaches benzoxazoles, and specifically the B1 series (page 4, Figure 3):
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Including B7, where X is -Cl. Compound B7 anticipates a compound of instant compound (IV):
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when R6 is chloro-.
The Examiner notes claims 10, 14, and 20 recite functions of the compound in the body of the claim and include the term, “configured to”. Though Temiz-Arpaci does not explicitly disclose these functions of compound B7, these recited functions are considered to be an inherent property of the compounds. The Examiner points to MPEP § 2112, and specifically the section titled, “PRODUCT AND APPARATUS CLAIMS – WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT”:
“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Thus, Temiz-Arpaci anticipates claims 4, 6, 10, 14, and 20. The Examiner notes additional compounds of the instant claims are anticipated by Temiz-Arpaci, and will be rejected upon expansion of the search.
Claims 4, 6, 8, 10, 12, 14, 16, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ertan-Bolelli (Ertan-Bolelli, T. et. al., Med. Chem. Res., 2016, 25, 553-567). This rejection applies to the expanded species where R6 is chloro.
The reference Ertan-Bolelli teaches benzoxazoles, and specifically the 3 series of compounds:
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Where X is not present and R is Cl in compound 3b (page 561). Ertan-Bolelli additionally teaches compound 3b in DMSO-d6 for 1HNMR characterization, which qualifies as a pharmaceutical composition. Similar to above, though Ertan-Bolelli does not explicitly disclose the functions of compound 3b recited in the instant claims, these recited functions are considered to be an inherent property of the compounds. Thus, Ertan-Bolelli anticipates claims 4, 6, 8, 10, 12, 14, 16, 18, and 20. The Examiner notes additional compounds of the instant claims are anticipated by Ertan-Bolelli, and will be rejected upon expansion of the search.
Conclusion
Claims 4, 6, 8, 10, 12, 14, 16, 18, and 20 are rejected. Claims 1-3, 5, 7, 9, 11 ,13, 15, 17, and 19 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kendall Heitmeier whose telephone number is (703)756-1555. The examiner can normally be reached Monday-Friday 8:30AM-5:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached on 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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/K.N.H./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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