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 .
Application Status
The amendment filed on 5/06/2026 in response to the Non-Final Rejection have been entered.
Claims 4, 6-20, 22-23, 26-29 and 31-47 are currently pending.
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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.
Claims 22-23 and 26-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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.
New claims 41-46 which are drawn to methods of treatment and would have been grouped within Group II are withdrawn from consideration consistent with the withdraw of claims 22-23 and 26-29.
In the prior office action, 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 and a subgenus of the elected species, specifically that recited in claim 10, having the following formula
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390
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which were also found to be free of the prior art.
The examiner has further expanded the search to encompass compounds of formula II’a (Claim 6):
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415
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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 6, 10, 19, 20, 33, 39-40 and 47 are allowable.
The following claims are currently under consideration:
Claims 4 and 8 read on next species as set forth below in the 102 rejections
Claims 11 and 34-38 depend from claim 6 which has been indicated as allowable.
Claims 7, 9, 12-18 and 31-32 are withdrawn from consideration as not reading on the next species.
Rejections Withdrawn:
The rejection of claim 13 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 removal of preferably.
The rejection of Claim(s) 1-2, 6, 13-14 and 31 under 35 U.S.C. 102(a)(1) as being anticipated by Revesz, Laszlo (WO01/30778A1, 2001-05-03) is withdrawn in view of the claim amendments.
The rejection of Claim(s) 1-2, 12, 20 and 31 under 35 U.S.C. 102(a)(1) as being anticipated by Gobbi et al. (WO2014/187762A1, 2014-11-27)) is withdrawn in view of the claim amendments.
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.
Claims 34-38 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.
Claims 34-37 recite numerous chemical formulas for R3 including, but not limited to,
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. However, there is insufficient antecedent basis for this limitation in the claim since claim 33, from which claims 34-37 depends limits R3 when it is a C1-C6 alkyl to be optionally substituted with -NR5R6.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected 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. Claim 11, which depends from claim 6, recites a compound of formula (V):
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. However, claim 6 requires that X’ be a N within the formula
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. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 and 8 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No: 1507839-10-2 (2013-12-31).
CAS Registry No: 1507839-10-2 has the structure:
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which reads on instant claim 4 wherein Y is N, R3 is a C1-C6 alkyl, R1 is a halo, R0 is a halo and R2 is H.
Claim(s) 4 and 8 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No: 1508783-52-5 (2014-01-01).
CAS Registry No: 1508783-52-5 has the structure:
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which reads on instant claim 4 wherein Y is O, R3 is a C1-C6 alkyl, R1 is a halo, R0 is a halo and R2 is H.
Claim(s) 4 and 8 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No: 1503936-21-7 (2013-12-26).
CAS Registry No: 1503936-21-7 has the structure:
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which reads on instant claim 4 wherein Y is N, R3 is a C1-C6 alkyl, R1 is a halo, R0 is a H and R2 is H.
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.
Claims 13-17 and 31-32 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.
Claims 13-17 recite numerous chemical formulas for R3 including, but not limited to,
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. However, there is insufficient antecedent basis for this limitation in the claim since claim 12, from which claims 13-17 depends limits R3 when it is a C1-C6 alkyl to be optionally substituted with -NR5R6.
Regarding claim 31, claim 31 depends from a canceled claim, e.g. claim 1.
Regarding claim 32, claim 32 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 compound 76 is a racemic mixture of compound 77 and compound 77 is a stereoisomer of compound 76. This appears to be repetitive.
Conclusion
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.
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
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