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 .
Claims 1, 2, 6-19, 21, and 22 are pending in the instant application. Claims 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected subject matter. Claims 1, 2, 6-8, and 10 are rejected. Claims 9, 11-13 and 21 are objected. Claim 22 is allowed.
Election/Restrictions
It is noted that the search of the Markush-type claim has not been extended beyond the non-elected species wherein:
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; R1 is -NH(C=O)CH2X wherein X is halo; R2 is –(C=O)NRaR3 wherein Ra is H; and the remaining variables are as defined in the claims.
As prior art has been found which anticipates the above identified nonelected species, the Markush-type claims are rejected as follows and the subject matter of the claims drawn to nonelected species held withdrawn from consideration. Claims 1, 2, 6-13, 21, and 22 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since art was found on the nonelected species, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Response to Amendment and Arguments/Remarks
Applicant’s amendment and arguments/remarks filed on May 5, 2026 have been fully considered and entered into the application. With regards to the 35 U.S.C. 102(a)(1) rejections as being anticipated by Al-Nadaf et al. and Flipo et al., the 35 U.S.C. 102(a)(2) rejection as being anticipated by U.S. Patent No. 12,240,821 and the nonstatutory double patenting rejection as being unpatentable over U.S. Patent No. 12,240,821, the grounds for rejection are moot in view of Applicant’s amendment and the rejections and the objection over claims 9 and 12 have been withdrawn.
However, this amendment has necessitated new grounds of rejection under 35 U.S.C. 112(b) and 35 U.S.C. 102(a)(1), which are described below.
New 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation that R3 can be phenyl-H. Since R4 has been amended to no longer include H, there is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 10 recites the compound BE-2-15. Since R4 has been amended to no longer include O(C1-C6)alkyl, there is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
New Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1, 2, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Al-Nadaf et al. (Bioorg. Med. Chem. 18 (2010) 3088-3115).
Al-Nadaf et al. discloses compounds 156, 157 and 158 (see Scheme 6 on page 3106) which anticipate compounds of the claims wherein X is chloro; R2 is –(C=O)NRaR3 wherein Ra is H and R3 is phenyl-R4 wherein R4 is CH3 or Cl.
Claims 1, 2, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ghosh et al. (Journal of Molecular Structure 1042 (2013) 57-65).
Ghosh et al. discloses the compound 7 (see Scheme 1 on page 58) which anticipates a compound of the claims wherein X is chloro; R2 is –(C=O)NRaR3 wherein Ra is H and R3 is -C3 alkyl.
Claim Objections
Claims 9, 13, and 21 are objected to as being dependent upon a rejected base claim. However, even if the claims are amended to be in independent form, they would still not be in condition for allowance because they contain non-elected subject matter. In other words, the subject matter or species which are not embraced by the elected embodiment or the above identified nonelected species have been withdrawn from further consideration.
Claims 11 and 12 are 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.
Allowable Subject Matter
Claim 22 is allowed. No prior art was found.
Conclusion
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 KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622
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