DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/20/2026 has been entered.
Claims 4, 6-20, 22-23, 26-29 and 31-48 are currently pending.
Claims 22-23, 26-29 and 41-46 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 timely traversed the restriction (election) requirement in the reply filed on 1/05/2026.
The election filed on 1/05/2026 in response to the Restriction Requirement of 11/13/2026. Applicants elected, with traverse, Group 1, claims 1-20 and 31, drawn to a compound having the formula (I’) and the following compound as the species:
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.
A search of the prior art did not identify any publications which anticipate or render obvious the elected species. The examiner has expanded the search to encompass the compounds of claim 19, a subgenus of the elected species, specifically that recited in claim 10, having the following formula
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and compounds of formula II’a (Claim 6):
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wherein X’ is specifically limited to N and found these compounds to be free of the prior art.
Accordingly, the examiner has moved onto the next species which reads on the genus of claim 4 read on the next species.
Claims 4, 6, 8, 10, 13-20, 31-40 and 47-48 are currently under consideration.
Claims 7, 9 and 11-12 are withdrawn from consideration as being drawn to non-elected species not encompassed by the expanded search.
Rejections Withdrawn:
The rejection of Claims 34-38 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 is withdrawn in view of Applicants amendment.
The rejection of Claim 11 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn in view of Applicants amendment.
The rejection of Claim(s) 4 and 8 under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No: 1507839-10-2 (2013-12-31) is withdrawn in view of Applicants amendments to claim 4.
The rejection of Claim(s) 4 and 8 under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No: 1508783-52-5 (2014-01-01) is withdrawn in view of Applicants amendments to claim 4.
The rejection of Claim(s) 4 and 8 under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No: 1503936-21-7 (2013-12-26) is withdrawn in view of Applicants amendment to claim 4.
New Rejections Necessitated by the amendment:
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 48 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.
Regarding claim 48, claim 48 recites specific compounds having the formula:
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or a stereoisomer or a racemic mixture thereof. In the instant case, this is confusing since the compound is a specific stereoisomer.
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) 4, 8, 13-18, and 31 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No: 1964996-02-8 (2016-08-02).
CAS Registry No: 1964996-02-8 has the structure:
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which reads on instant claim 4 wherein Y is N, R3 is a C1-C6 alkyl, specifically a Me or
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wherein n=0, R0 is a H, R1 is a halo and R2 is an OH. Note: Claim 31 has been included in the rejection since claim 31 recites an intended use of the compound as an analytical reference or an invitro screening tool comprising the compound of claim 4. However, the claims do not recite any additional ingredients within the composition which would result in a structural difference between the claimed invention and the prior art.
Claim(s) 4, 8, 13-18, and 31 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No: 1965000-08-1 (2016-08-02).
CAS Registry No: 1965000-08-1 has the structure:
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which reads on instant claim 4 wherein Y is O, R3 is a C1-C6 alkyl, specifically
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wherein n=1, R0 is H, R1 is a halo, and R2 is OH. Note: Claim 31 has been included in the rejection since claim 31 recites an intended use of the compound as an analytical reference or an invitro screening tool comprising the compound of claim 4. However, the claims do not recite any additional ingredients within the composition which would result in a structural difference between the claimed invention and the prior art.
Claim(s) 4, 8, 13-18, and 31 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No: 2555174-15-5 (2020-12-10).
CAS Registry No: 2555174-15-5 has the structure:
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which reads on instant claim 4 wherein Y is O, R3 is a C1-C6 alky, specifically a Me or
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wherein n=0, R0 is halo, R1 is a halo, and R2 is OH. Note: Claim 31 has been included in the rejection since claim 31 recites an intended use of the compound as an analytical reference or an invitro screening tool comprising the compound of claim 4. However, the claims do not recite any additional ingredients within the composition which would result in a structural difference between the claimed invention and the prior art.
In order to expedite prosecution, the Examiner would like to point out the following rejections that could be made once the claims are under consideration.
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 11 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.
Regarding claim 11, claim 11 which recites the formula
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has been amended to depend from claim 7 which recites the formula
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. As such, there is insufficient antecedent basis for this limitation in the claim.
Conclusion
Claims 4, 8, 13-18, 31 and 48 are rejected.
Claims 6, 10, 19-20, 33-40 and 47 are free of the prior art and in condition for allowance.
Claim 32 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON J FETTEROLF whose telephone number is (571)272-2919. The examiner can normally be reached M-F 6AM-4PM.
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 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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BRANDON J. FETTEROLF, PHD
Primary Patent Examiner
Art Unit 1626
/BRANDON J FETTEROLF/ Primary Examiner, Art Unit 1626
Prosecution Insights