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 .
Election/Restrictions
Applicant’s election without traverse of compound no. 1 in the reply filed on 2025 August 27 is acknowledged. Claims 1-3, 9-17, 26, 36, and 37 are pending in the examined application. Due to no prior art against the elected species, a search of compound of formula (I) has been extended to the following scopes: W is limited to -C(O)-NH-CH2-pyridine substituted with oxo, methoxy, and a methyl group or CO2H; E is a bond, CH2, or CH(Me) group; and Q is piperidine substituted with a haloalkyl group, phenyl-4-cyclohexyl, unsubstituted phenyl, or o, p-dichlorophenyl group. Consequently, claims 1-3, 9, 10, 12, 15-17, 26, 36, and 37 are examined on the merits.
Claims 11, 13, and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected compound, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2025 August 27.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2023 November 30 and 2025 August 28 were submitted in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1-3, 9, and 16 are objected to because of the following informalities: they contain difficult to understand images. In claims 1-3 and 16 the difficult to read image is
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; in claim 9, the difficult to read image is
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.
Appropriate correction is required.
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 1-3, 9, 10, 12, 15-17, 26, 36, and 37 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. When variable Z is C, the carbon ring atom is missing a full octet of electrons and is positively charged. What is the corresponding anion to balance out the cationic charge?
Claims 26 and 37 are unclear because it refers to compounds recited in table A.
MPEP 2173.05(s) teaches the following:
Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted).
When MPEP 2173.05(s) is applied to claim 37, table A should be incorporated into claim 37 because the specification can be amended and the metes and bounds of the claim change as the specification is amended.
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) 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ALBRECHT ( WO 2015023915, published 2015 February 19). Albrecht describes compounds 101, 103-106, and 108 (pages 27-29). In these compounds the following examined definitions apply: W is -C(O)-NH-CH2-pyridine substituted with oxo, methoxy, and a methyl group; E is CH(Me); and Q is piperidine substituted with a haloalkyl group. Pharmaceutical compositions are described (page 61, paragraph [0088] to page 64, paragraph [0104]).
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Claim(s) 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SID 323425035, (https://pubchem.ncbi.nlm.gov/substance/323425035, deposit date 2017 January 24, cited in 2023 November 30 IDS). In SID 323425035, the following examined definitions apply: W is a -CO2H group; and E-Q is cyclopropyl.
Claim(s) 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 126884-10-4, (STN record of RN 126884-10-4, entered STN 1990 May 4, cited in 2025 August 28 IDS). In RN 126884-10-4, the following examined definitions apply: W is a -CO2H group; and E-Q is CH2-phenyl-4-cyclohexyl.
Claim(s) 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by VETUSCHI (Spectroscopy Letters, 1989, 22(4), 375-385, cited in 2025 August 28 IDS). Vetuschi describes compound 1 (page 376), a compound in which the following examined definitions apply: W is CO2H; and E-Q is CH2-phenyl, a benzyl group.
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Claim(s) 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by VEERAREDDY (Der Pharma Chemica, 2012, 4(4), 371-1374, cited in 2025 August 28 IDS). Veerareddy describes lonidamine 1 (page 1371), a compound in which the following examined definitions apply: W is CO2H; and E-Q is CH2-[o,p-dichlorophenyl], a benzyl group substituted by two chloro groups.
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Allowable Subject Matter
Claims 1-3, 9, 10, 12, 15-17, 26, 36, and 37 are not allowed.
The following is a statement of reasons for the indication of allowable subject matter: Albrecht ( WO 2015023915, published 2015 February 19) does not describe a compound in which examined variable W includes an 8‐methyl‐[1,2,4]triazolo[4,3‐a]pyridine group.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699