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 .
Response to Amendment
The amendments received 06/17/2026 have been entered. Claims 1-10 are pending. Claims 3 and 6-10 remain withdrawn. Any objection or rejection previously set forth in the Office Action mailed 03/17/2026 not maintained herein has been overcome and is withdrawn.
New grounds of rejection are set forth herein as necessitated by amendment.
Election/Restrictions
Applicant has amended the scope of the claims to exclude compound 1-12. MPEP 803.02(III)(A) states as follows.
“Should applicant, in response to a rejection of a Markush claim, overcome the rejection by amending the Markush claim to exclude the species anticipated or rendered obvious by the prior art, the amended Markush claim will be examined again. The examination will be extended to the extent necessary to determine patentability of the Markush claim.”
Examiner has extended the scope of examination to encompass compounds of Formula 1 wherein X is NH, Y is CH, L is Formula 2-1 and Ar is phenyl, as well as to compounds 1-4 and 1-5 as in claim 4, and found art. Claim 3 remains withdrawn as the scope of examination does not encompass the benzothiazole core of Formula 4.
Information Disclosure Statement
The Information Disclosure Statement filed on 06/17/2026 is in compliance with the provisions of 37 CFR 1.97 and has been considered in full. A signed copy of list of references cited from the IDS is included with this Office Action.
Claim Objections
Claim 1 is objected to because of the following informalities: "thes group" should read "the group". Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 2 and 4-5 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.
Claims 2 and 4-5 recite “a… derivative… thereof”. The term “derivative” is indefinite as a derivative does not have a defined structure known in the art. For example, one could not ascertain to what degree a “derivative” may differ from the parent structure, resulting in millions of possibilities. One could not possibly envisage all the possibilities of a derivative of any compound of the instant invention.
Claim Rejections - 35 USC § 112(a)
Claims 1-2 and 4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for stereoisomers, tautomers, hydrates, and pharmaceutically acceptable salts, does not reasonably provide enablement for solvates. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The claims are drawn to solvates of Formula 1. However, the numerous examples presented all failed to produce a solvate. These cannot be simply willed into existence and are not considered predictable in the art. As was stated in Morton International Inc. v. Cardinal Chemical Co., 28 USPQ2d 1190 “The specification purports to teach, with over fifty examples, the preparation of the claimed compounds with the required connectivity.” Hence, applicants must show that solvates can be made, or limit the claims accordingly.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 4-5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 has been amended to remove “derivative”. Claims 2 and 4-5, which depend on claim 1, recite “The compound of claim 1, a… derivative… thereof”. Claims 2 and 4-5 therefore fail to include all the limitations of the claim from which they depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(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.
Claim(s) 1-2 and 4-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Number 1377920-51-8 (2012).
CAS discloses the following compound RN 1377920-51-8 as below.
PNG
media_image1.png
204
488
media_image1.png
Greyscale
The compound is identical to compound 1-4 in claim 4.
Claim(s) 1-2 and 4-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Number 1251685-73-0 (2010).
CAS discloses the following compound RN 1251685-73-0 as below.
PNG
media_image2.png
218
489
media_image2.png
Greyscale
The compound is identical to compound 1-5 in claim 4.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Number 1180261-18-0 (2009).
CAS discloses the following compound RN 1180261-18-0 as below.
PNG
media_image3.png
208
508
media_image3.png
Greyscale
The compound is within the scope of Formula 1 wherein X is NH, Y is CH, L is Formula 2-1 and Ar is phenyl. Examiner notes that the aryl of Formula 2-1 is interpreted to be within the scope of “wherein, each of… the aryl group” which can be substituted by methoxy.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Number 1095406-62-4 (2009).
CAS discloses the following compound RN 1095406-62-4 as below.
PNG
media_image4.png
200
488
media_image4.png
Greyscale
The compound is within the scope of Formula 1 wherein X is NH, Y is CH, L is Formula 2-1 and Ar is phenyl.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Number 1061486-84-7 (2008).
CAS discloses the following compound RN 1061486-84-7 as below.
PNG
media_image5.png
293
369
media_image5.png
Greyscale
The compound is within the scope of Formula 1 wherein X is NH, Y is CH, L is Formula 2-1 and Ar is phenyl substituted by halogen.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Number 791080-76-7 (2004).
CAS discloses the following compound RN 791080-76-7 as below.
PNG
media_image6.png
293
369
media_image6.png
Greyscale
The compound is within the scope of Formula 1 wherein X is NH, Y is CH, L is Formula 2-1 and Ar is phenyl.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry Number 791078-94-9 (2004).
CAS discloses the following compound RN 791078-94-9 as below.
PNG
media_image7.png
293
369
media_image7.png
Greyscale
The compound is within the scope of Formula 1 wherein X is NH, Y is CH, L is Formula 2-1 and Ar is phenyl substituted by halogen.
Response to Arguments
Applicant's arguments filed 06/17/2026 have been fully considered.
Regarding the rejections under 35 U.S.C. 112(b), Applicant states that “appropriate corrections have been made”. However, the amendments do not fully resolve the rejections as only claim 1 has been amended to remove the term “derivative”, while claims 2 and 4-5 have not been amended to remove the term “derivative”. Applicant has additionally set forth no arguments against the rejection. Therefore, the rejection has been maintained for claims 2 and 4-5 over the limitation “derivative”.
Regarding the rejection under 35 U.S.C. 112(a), Applicant states that “appropriate corrections have been made”. However, the amendments do not fully resolve the rejections as only claim 5 has been amended to remove the term “solvates”, while claims 1-2 and 4 have not. Applicant has additionally set forth no arguments against the rejection. Therefore, the rejection has been maintained for claims 1-2 and 4 over lack of enablement for “solvates” of the claimed compounds.
Conclusion
No claims are allowed.
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 MADELINE E BRAUN whose telephone number is (703)756-4533. The examiner can normally be reached M-F 8:30am-5:00pm ET.
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, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.E.B./Examiner, Art Unit 1624 06/26/2026
/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624
Prosecution Insights