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 1-20 are pending. Claims 4 and 8-20 are withdrawn. Claims 1 and 3 are rejected. Claim 2 is objected to. Claims 5-7 are allowable.
Response to Amendments/Arguments
Applicant’s arguments and amendments (particularly the removal of halogen from R5 definition in claim 1 and the inclusion of R2 definition in claim 5), filed 4/13/2026, with respect to the rejection(s) and objections of claim(s) 1-3 and 5-7 have been fully considered and are persuasive. Therefore, the rejections and objections have been withdrawn. However, upon further consideration and as necessitated by amendments, a new ground(s) of rejection is made in view of JP2005060255. Because all previous rejections and objections from the Office Action mailed 1/22/2026 are withdrawn, Applicant’s arguments from 4/13/2026 will not be addressed.
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 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eiji et al. (JP2005060255).
Regarding instant claim 1, Eiji discloses the following structure (arrow added by Examiner to focus on compound 70):
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365
771
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(see para. [0036]), which is embraced by a compound of instant Formula (I):
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121
291
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, wherein X, Y, Z, Z’, and Y’ = CH; R5 = haloalkyl (4-CF3); R3 and R4 = H; R2 = H; R1 = C1 alkyl; R12 = phenyl (C2H5); x = 1. Regarding instant claim 3, the prior art compound number 70 supra is embraced by a compound of (I-c):
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104
345
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.
Regarding the pharmaceutical composition with a pharmaceutically acceptable excipient, Eiji teaches the following in para. [0045] (carrier may be replaced by excipient to one of skill in the art):
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171
681
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.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 5-7 are allowed. The closest prior art is shown supra under the 35 USC 102 rejection but do not teach the claimed combinations of variables.
Conclusion
Applicant’s amendments necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. 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 extension fee 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 MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Clark can be reached on 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGHAN C HEASLEY/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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