Detailed Action
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 .
Status of the Claims
Claims 1-5 are pending. Claims 1-5 are rejected.
Priority
This is a 35 U.S.C. 371 National Stage Filing of International Application No.
PNG
media_image1.png
23
199
media_image1.png
Greyscale
, which claims priority under 35 U.S.C. 119(a-d) to
PNG
media_image2.png
20
313
media_image2.png
Greyscale
. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d).
Information Disclosure Statements
The Information Disclosure Statements (IDS) submitted on 4/18/2023, 8/6/2024, and 12/24/2024 were considered by the Examiner.
Election of Species
Applicant’s election without traverse of compound 30 of instant claim 4:
PNG
media_image3.png
122
169
media_image3.png
Greyscale
, in the reply filed on 9/15/2025 is acknowledged.
The elected species is not allowable. Incidental to the search of the elected species, prior art over non-elected species was discovered and, in the interest of compact prosecution, is presented below.
Claim Objections
Claim 4 is objected to because of the following informalities: There should be an “or” between the last two compounds on p. 7. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 193070-47-2 (which entered STN database on 8/26/1997).
Regarding instant claim 1, CAS Registry No. 193070-47-2 is drawn to the following structure:
PNG
media_image4.png
160
261
media_image4.png
Greyscale
, which is embraced by a compound of instant Structural Formula 2:
PNG
media_image5.png
144
201
media_image5.png
Greyscale
, wherein R5-R8 = H.
Regarding instant claims 2-3, CAS Registry No. 193070-47-2 is embraced by a compound of instant Structural Formula 4:
PNG
media_image6.png
177
198
media_image6.png
Greyscale
, wherein R13- R16 = H.
Regarding instant claim 4, CAS Registry No. 193070-47-2 is identical to compound 23 on p. 6:
PNG
media_image7.png
149
170
media_image7.png
Greyscale
.
Regarding instant claim 5, which depends from instant claim 1, the limitation of a pharmaceutically acceptable salt is not a requirement and therefore does not need to be addressed.
The following limitation of instant claims 1-5, “for inhibiting the activity of the 5-HT7 serotonin receptor”, is part of the preamble. “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”. See MPEP 2111.02(II). Therefore, this limitation does not need to be addressed by the prior art.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1448808-50-1 (which entered the STN database on 8/21/2013).
Regarding instant claim 1, CAS Registry No. 1448808-50-1 is drawn to the following structure:
PNG
media_image8.png
169
239
media_image8.png
Greyscale
, which is embraced by a compound of instant Structural Formula 2:
PNG
media_image5.png
144
201
media_image5.png
Greyscale
, wherein R5 – R7 = H and R8 = C1 alkoxy group.
Regarding instant claims 2-3, CAS Registry No. 1448808-50-1 is embraced by a compound of instant Structural Formula 4:
PNG
media_image6.png
177
198
media_image6.png
Greyscale
, wherein R13- R15 = H and R16 = C1 alkoxy.
Regarding instant claim 4, CAS Registry No. 1448808-50-1 is identical to the structure of the instant elected species, compound 30 on p. 6:
PNG
media_image9.png
126
179
media_image9.png
Greyscale
.
Regarding instant claim 5, which depends from instant claim 1, the limitation of a pharmaceutically acceptable salt is not a requirement and therefore does not need to be addressed.
The following limitation of instant claims 1-5, “for inhibiting the activity of the 5-HT7 serotonin receptor”, is part of the preamble. “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”. See MPEP 2111.02(II). Therefore, this limitation does not need to be addressed by the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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, Joseph McKane can be reached at 571-272-0699. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MEGHAN C HEASLEY/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
/JOSEPH K MCKANE/Supervisory Patent Examiner, Art Unit 1626