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 .
This final rejection replaces the final rejection of 2026 July 6. After an interview with attorney Tim McFadden on 2026 August 19, it was pointed out that the Décor reference had a typo. In the final rejection of 2026 Jul6, Décor was referred to as WO 2015144562. Décor is WO 2015144652. Consequently, a new final rejection with a time period of 2 months for reply is being mailed out as taught by MPEP 710.06. Due to the document already being present in the file wrapper, it does not need to be attached to the new office action. A PTO-892 reflecting this change is attached to the action.
Response to Amendment
The 2026 May 8 claim set contains newly amended claims 36 and 38-52 and newly added claims 53 and 54. The claim objections of the non-final action are overcome because the images are now legible. The 35 U.S.C. 112 rejection is overcome because claims 26 and 37 have been cancelled. ALBRECHT (WO 2015023915, published 2015 February 19) is no longer prior art due to variable Z being defined as CH. The remaining 35 U.S.C. 102 rejections of the non-final rejection are overcome because variable W is no longer CO2H.
A search of structure (I) has been extended to the compounds of the prior art shown below, in which the following examined variable definitions apply: Z is N; E-Q is pyridine substituted with two fluoro moieties or phenyl substituted with chloro or two fluoro moieties, CH2-phenyl-4-CF3, or SO2-phenyl; W is NH-C(O)-phenyl substituted with CF3, Br, or two fluoro moieties, NH-C(O)-[phenyl or heteroaryl], or SO2-NH-[2,1,3‐benzoxadiazole or 4‐chloro‐2,5‐difluorophenyl; and (R1, R2, R3, R4) represent (H, H, H, H), (H, F, H, H), (F, H, H, H), (H, H, Cl, H) or (H, H, OMe, H).
Consequently, claims 39, 41-43, 46-48, 51, 53, and 54 are withdrawn.
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, 38, 40, 44, 45, 47, 49, and 50 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DÉCOR (WO 2015144652, published 2015 October 1). Décor teaches I-5-1 through I-5-11 (page 112). In these compounds the following definitions apply: Z is N; E-Q is pyridine substituted with two fluoro moieties or phenyl substituted with chloro or two fluoro moieties; W is NH-C(O)-phenyl substituted with CF3, Br, or two fluoro moieties; and (R1, R2, R3, R4) are selected from (H, H, H, H), (H, F, H, H), or (F, H, H, H).
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Claim(s) 36, 38, 40, 44, 45, 47, 49, and 52 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HUANG (WO 2015127125, published 2015 August 27). Huang describes compounds 1-102, 104, 105, 107-110, 112-121, and 123-130 (pages 3-31). In these compounds the following definitions apply: Z is N; E-Q is CH2-phenyl-4-CF3; W is NH-C(O)-[phenyl or heteroaryl]; and R1, R2, R3, R4 are each H. Pharmaceutical compositions are described (pages 85-91, paragraphs [0116] to [0139]). Compound 1 is shown as a representative example.
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Claim(s) 36, 38, 40, 44, 45, 47, 49, and 50 is/are rejected under 35 U.S.C. 102(a(1) as being anticipated by MUELLER (WO 2018/122232, filed 2018 July 5). Mueller describes two compounds, I-201a and I-318a (page 374, lines 12-15; page 417, lines 10-12). In these compounds the following definitions apply: Z is N; E-Q is SO2-phenyl; W is SO2-NH-[2,1,3‐benzoxadiazole or 4‐chloro‐2,5‐difluorophenyl; and (R1, R2, R3, R4) are each (H, H, Cl, H) or (H, H, OMe, H).
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Conclusion
Claims 36, 38, 40, 44, 45, 47, 49, 50, and 52 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.
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 TWO 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 TWO-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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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