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 .
Priority
This application is a 371 of PCT/EP2021/087174 (12/22/2021)
and claims foreign priority to EP 20216606.2 (12/22/2020).
Election/Restrictions
Applicant's election with traverse of Group I, claims 16-22, in the reply filed on 12/22/25 is acknowledged. The traversal is on the ground(s) that there would not be a search burden. This is not found persuasive because a search of generic formula (2) results in hundreds of thousand results that require consideration and thus presents a search burden.
The requirement is still deemed proper and is therefore made FINAL.
Applicant also elected the species WW-74 having the following structure:
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Corresponding to formula (2) when A2 is CH; A3 is N; A4 is NR11; R11 is S(O)2R22; R22 is phenyl; A5-A8 are CH; L is CHR21; R21 is OH; o is 2; p is 1; R16 and R17 form C=CH-CH3; R18 is C5-alkyl determined to read on claims 16, 17, 19, 20 and 22.
As detailed in the following rejections, the generic claim encompassing the elected species was not found patentable. Therefore, the provisional election of species is given effect, the examination is restricted to the elected species only, and claims not reading on the elected species are held withdrawn. MPEP 803.02; Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App. lnt. 1987). Accordingly, claims 18 and 21 are hereby withdrawn.
Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection through amendment, the amended Markush-type claim will be reexamined to the extent necessary to determine patentability of the Markush-type claim. See MPEP 803.02.
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.
Claims 16, 17, 19, 20 and 22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 16 has the language: “or a stereoisomer, enantiomer, racemic, thereof” which one of skill in the art would find confusing as to the meaning of “racemic, thereof”.
Claim 16 appears to have a typo at “attached from a group selected from”:
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rendering the claim unclear as to the scope of R16 and R17.
Thus, claim 16 and those that depend therefrom are indefinite.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16, 17, 19, 20 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nazare et al. (US20030199689).
Nazare teaches Example 88 ([0547]; claims 4):
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including as a pharmaceutical preparation comprising a pharmaceutically acceptable carrier (claim 6). Thus, Nazare’s compound corresponds to claim 1’s formula (2) when A2 is CH; A3 is N; A4 is NR11; R11 is aryl (phenyl) substituted by Z1 of Cl; A5-8 are CH; L is C(O)NH; o is 2; p is 1; R16 and R17 are H; R18 is isopropyl.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT H HAVLIN whose telephone number is (571)272-9066. The examiner can normally be reached 9am - 6pm.
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, Kortney Klinkel can be reached at (571) 270-5293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT H HAVLIN/Primary Patent Examiner, Art Unit 1626
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