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 .
DETAILED ACTION
Claims 1-2, 9-17 and 25 are pending in the present application file.
AMENDMENTS
The amendments filed September 21, 2026 have been acknowledged and entered in the present application file.
Response to Arguments
Applicant’s amendments submitted September 21, 2026, have overcome all previous objections and rejections from the Office Action mailed April 22, 2026. Therefore, Applicant’s arguments from September 15, 2026 will not be addressed.
Claim Rejections - 35 USC § 112
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 9 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.
Present claim 2 recites a limitation which is defined by an intended outcome.
When claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008). See MPEP 2173.05(g).
The limitation of claim 16, which is dependent upon claim 15, is not considered further limiting as it is presumed the any administration of a compound of formula (II) which meets the requirements of instant claim 15, treating prostate cancer in a patient comprising administration of a therapeutic agent, wherein the therapeutic agent is a compound of formula (II), will also have the required properties to meet the limitations of claim 16.
"Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. See MPEP 2112.01(II).
Claim 2 is directed to a product claim and does not include additional active steps for achieving the claimed results/limitations of claim 2. As such it is presumed the results/limitations presented in claim 2, can be achieved by any form of administration of a compound of formula (II) as no additional agent or process steps are recited.
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
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 and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1470408-71-9 (which entered STN November 8, 2013; henceforth “CAS 71-9”).
CAS 71-9 is directed to (1R)-N-methyl-1-naphthalen-1-yl-N-(pyridin-3-ylmethyl)ethanamine having the structure shown below.
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169
269
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CAS 71-9 corresponds to a compound of present formula I wherein,
R1 is
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59
58
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R2 is hydrogen
R3 is CH3
R4 is
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79
71
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R5 is CH3
CAS 71-9 corresponds to a compound of present claim 9 (see third compound in the first row on page 7).
Regarding claims 2 and 10, the limitations “capable of treating, ameliorating, and/or preventing viral infection” and “pharmaceutical” in the preamble of the claims 2 and 10 respectively are interpreted as an intended outcomes or uses for the compound of Formula I of claim 1 and composition of claim 10.
Regarding an intended use limitation, MPEP 2111.02(II) notes:
“If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”.
A recitation of the intended result of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
In this situation, the limitation “pharmaceutical” does not affect the structure of the composition of present claim 10. The present claim is interpreted as a composition comprising the compound of claim 1, which is disclosed by the CAS Registry entry.
Claims 1 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0269834 (Ghosh et al.; Publication Date: November 3, 2011).
Ghosh et al. teach compounds and compositions, and methods for treating respiratory diseases and illness, such as severe acute respiratory syndrome (SARS).
Ghosh et al. disclose Compound 24 in Table 10 which corresponds to 5-amino-2-methyl-N-[(1R)-1-naphthalen-1-ylethyl]benzamide having the structure shown below.
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185
296
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Compound 24 is encompassed by present claim 9 (see last compound, last row of page 6).
Conclusion
Claims 1-2 and 9-10 are rejected.
Claims 11-17 and 25 are withdrawn.
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 QUINCY A MCKOY whose telephone number is (703)756-4598. The examiner can normally be reached Monday - Thursday 8:00 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QUINCY A. MCKOY/
Patent Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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