8DETAILED 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 .
Claim Status
Claims 55-72 are pending. Claims 60-65, 67 and 70-72 are withdrawn. Claims 55-59 are rejected. Claims 66 and 68-69 are allowed.
Priority
Applicant’s claim for the benefit of a prior-filled application under U.S.C. 119(e) or under 35 U.S.C. 120, 121 or 365(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application of the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 35 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Provisional Applications 63/135,140, 63/223,747, and 63/226,816 and fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C 112, first paragraph for one or more claims of this application.
Applications ‘140 and ‘747 provide for the following genus:
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Application ‘816 provides for the following genus:
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None of the provisional disclosures provide supported for instant formulas (Ia), (Ib) and (I) which allow variable R11a, R11b, or R11 to be something other than hydrogen.
Additionally, Application, ‘140 does not provide for the following second active components listed in instant claim 69: (d) a monoamine oxidase inhibitor, (f) an adrenergic drug, (g) a dopaminergic drug, (h) a purified erinacine, or (i) a purified hericenone.
For these reasons the earliest priority dates for the claims are as follows:
Claims 66-68: January 8th, 2021;
Claim 69: July 20th, 2021;
Claims 55-65 and 70-62: January 7th, 2022.
Election/Restrictions
Applicant’s election without traverse of Group I and the species N-BOC-Norpsilocin in the reply filed on July 17th, 2026 is acknowledged.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicant’s elected species appears free of the art. Therefore, according to MPEP 803.02: should the elected species be found allowable, the examination of the Markush-type claim will be extended. If the examination is extended and a non-elected species found not allowable, the Markush-type claim shall be rejected and claims to the non-elected invention held withdrawn from further consideration. The examination of the Markush-type claims has been extended to include the scope of claims 66 and 68-69 as well as the scope of claims 55-59 where the compound is as follows:
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This species of which is anticipated and not allowable under 35 USC 102. Any subject matter discussed outside this scope was discovered incidental to the expanded search and is presented in the interest of compact prosecution.
As a non-elected species has been found not allowable, the Markush-type claims have been rejected and claims to the nonelected invention are held withdrawn from further consideration. Examination has been limited to claims embracing the elected species which are claims 55-59, 66 and 68-69. Claims 55-59, 66 and 68-69 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since the nonelected species has not been found allowable, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Claims 60-65, 67 and 70-72 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
Claims 55-59 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2629216-62-0, which entered Registry on April 8th, 2021.
CAS Registry No. 2629216-62-0 is drawn 1,1-Dimethylethyl N-[2-(5-methoxy-1H-indol-3-yl)ethyl]-N-methylcarbamate, which has the following structure:
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The compound reads on claims 55-59 and is embraced by formula (Ia) where R1a is C1 alkyl, R2a is COOR10a, R10a is branched C4 alkyl, R4A is OR9a, R9a is C1 alkyl, and each of R3a, R6a, R7a, R8a, R11a, and R12a is hydrogen.
Allowable Subject Matter
Claims 66 and 68-69 are allowed.
The closest prior art with regards to the claims is CAS Registry No. 2408957-52-6 which entered registry on February 9th, 2020. The entry is drawn to 1,1-Dimethylethyl N-[2-(4-hydroxy-1H-indol-3-yl)ethyl]carbamate, which has the following structure:
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The prior art compound differs by N-Boc-Norpsilocin by having a hydrogen on the nitrogen that holds the BOC protecting group, instead of a methyl substituent. The registry entry does not provide any motivation or guidance that would lead a person of ordinary skill to make this modification therefore the prior art neither anticipates nor renders obvious the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLI A CHICKS whose telephone number is (571)270-0582. The examiner can normally be reached M-Th 7 a.m.- 5 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H Alstrum-Acevedo can be reached at (571)272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.C./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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