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 .
DETAILED ACTION
1. This application is a 371 of PCT/GB2021/053346 12/17/2021; FOREIGN APPLICATIONS: UNITED KINGDOM 2020037.4 12/17/2020 UNITED KINGDOM 2108483.5 06/14/2021.
Claims 1-9, 11-17, 19-21, 25-28, 30-31 are pending.
Claim Rejections/Objections Withdrawn
2. The objected to claim 1 for the spelling informality is withdrawn in view of the amendments. The rejection of claims 22, 25 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn in view of the amendments. The rejection of claims 1-5, 9, 11-13, 17, 19-20, 22, 24-28 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for a Markush group of subgroups i) ii) iii) separated by and/or is withdrawn based upon the amendments. The rejection of claim(s) 1, 11-12, 17, 20, 22, 24-28 under 35 U.S.C. 102(a)(1) as being anticipated by Shimizu US 2011/0201815 A1 is withdrawn based upon the amendments. The rejection of claim(s) 1-5, 9, 11-12, 20, 22, 24-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Chemical Database entry for N[1,1'-Biphenyl]-3-carboxylic acid, 5-methoxy-4'-[[(phenylmethoxy)carbonyl]amino]-, RN 1261934-11-5, SR Chemical Catalog Supplier: Combi Blocks LLC ED Entered STN: 03 Feb 2011. The rejection of claim(s) 28 i under 35 U.S.C. 103 as being unpatentable over STN Chemical Database entry for N[1,1'-Biphenyl]-3-carboxylic acid, 5-methoxy-4'-[[(phenylmethoxy)carbonyl]amino]-, RN 1261934-11-5, SR Chemical Catalog Supplier: Combi Blocks LLC ED Entered STN: 03 Feb 2011 as applied to claim 1-5, 9, 11-12, 20, 22, 24-27 above, and further in view of Bartlett is withdrawn based upon the amendments. The rejection of claims 1-5, 9, 11-13, 17, 19-20, 22, 24-28 under pre-AIA 35 U.S.C. 103 as being unpatentable over Bi “The discovery of potent agonists for GPR88, an orphan GPCR, for the potential treatment of CNS disorders” Bioorg. Med. Chem. Lett. 2015, 25, 1443− 1447 (cited on the IDS) in view of Silverman is withdrawn based upon the amendments. The rejection of claims 1-5, 9, 11-13, 17, 19-20, 22, 24-28 on the judicially-created basis that it contains an improper Markush grouping of alternatives is withdrawn based upon the amendments.
New Grounds of Rejection
3. Various new grounds of rejection are set forth below.
Restriction Election Maintained
4. Applicant’s election of group I and the species compound 2,
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without traverse in the reply filed on December 18, 2025 was previously acknowledged. According to applicants’ representative claims 1-5, 9, 11-13, 17, 19-20, 22, 24-28 read on the elected species. As detailed in the following rejections, the generic claim encompassing the elected species was not found patentable. The search and examination was continued until prior art was found that anticipated or rendered obvious a non-elected species that falls within the scope of the generic Markush claim reading on the elected species. As per MPEP 803.02 II. C. “[T]he examiner must continue to search the species of the claim unless the claim has been found to be unpatentable over prior art.” The examiner “need not continue to search the claim if the claim is rejected over prior art”. [ibid. D.] Therefore, the search and examination is restricted to the claims reading on the elected species, and claims not reading on the elected species are held withdrawn. Accordingly, claims 6-8, 14-16, 21, which do not read on the elected species are withdrawn.
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.
5. Claim(s) 1-5, 9, 11-13, 17, 20, 25-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Chemical Database entry for N-[2-(4-Methylphenyl)-5-pyrimidinyl]-2-phenoxyacetamide, RN 1574625-65-2, SR Chemical Library Supplier: ChemDiv, Inc. ED Entered STN: 27 March 2014. This compound reads on claim 1 where Ring A is pyrimidine the 5th and 6th selections, Ring B is phenyl, Ra and Rb are H, ring C is phenyl, R1 is H, n is 0, m is 0, p is 0, R2 is alkyl. This compound was entered in the database Chemcats, and is listed as being commercially available by the company ChemDiv Inc. The on sale bar is met since the following documentation shows that this material was subject to an offer for sale by a foreign manufacturer which was communicated to a prospective purchaser in the United States via the internet as shown by the following, which was dated by the internet archive;
Online:“https://web.archive.org/web/20130830174424/http://chemistryondemand.com/compound-library" dated August 30, 2013: accessed December 5, 2022. The compounds were offered for sale in DMSO meeting claim 29: 7. What form can you supply compounds from your library in? The selected libraries / library samples can be supplied as dry powders, DMSO solutions with pre-defined compound final concentration, or as dry films. A variety of library storage supplies is available too: storage tubes in racks (96 well format), microplates (both 96 and 384 well formats), individual glass vials. Custom replication (mother / daughter plates) and combination of formats can be performed as well. We can also provide any selected library in YOUR preferable compound storage supplies.
6. Claim(s) 1-5, 9, 11-13, 17, 19-20, 25-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Chemical Database entry for 2-(3-Methylphenoxy)-N-[2-(4-methylphenyl)-5-pyrimidinyl]acetamide, RN 1574567-83-1, SR Chemical Library Supplier: ChemDiv, Inc. ED Entered STN: 27 March 2014. This compound reads on claim 1 where Ring A is pyrimidine the 5th and 6th selections, Ring B is phenyl, Ra and Rb are H, ring C is phenyl, R1 is H, n is 0, m is 0, p is 1, R2 is alkyl (methyl), and R5 is alkyl (methyl). This compound was entered in the database Chemcats, and is listed as being commercially available by the company ChemDiv Inc. and was on sale as discussed above as both a compound and composition.
Conclusion
7. 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 DAVID K O'DELL whose telephone number is (571)272-9071. The examiner can normally be reached on Monday - Friday 9:30 - 7:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached on 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID K O'DELL/ Primary Examiner, Art Unit 1621
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