DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on August 20, 2026 was in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS was considered. A signed copy of form 1449 is enclosed herewith.
Response to Amendment
3. The amendments to the claims filed on August 20, 2026 have been fully considered. The amendments are sufficient to overcome the 35 USC 102 rejections over RN 790-22-7, RN 127958-22-9 and RN 2604406-89-3. These rejections are withdrawn.
4. The amendments to the claims and rebuttal arguments have been fully considered. The amendments are not sufficient to overcome the Improper Markush rejection. Below are responses to Applicant’s remarks.
The claims were previously rejected on the basis that it contains an improper Markush grouping of alternatives. The grouping was determined to be improper because the alternatives don’t share a single structural similarity and common use due to the core being defined by variables X, Y, Q and Z. These variables result in substantially different structures.
Applicants have amended the claims to specify that one of R8, R9 and R10 is
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Applicants argue that the compounds share a common use as GPR52 agonists and further comprise one ortho or meta amide substituent. Applicants also argue that compounds are disclosed which contain structures wherein variable X and Y are N or CH and wherein variable Q are N, CH or C-halogen.
These arguments have been fully considered, however, they are not persuasive. Notwithstanding the utility of the compounds, or the presence of species that are within the claimed genus, the core structure of Formula I is highly variable due to the presence of variables within this core structure. See above, and office action dated May 22, 2026. For this reason, the Improper Markush rejection is maintained. Claims 1-4, 56, 65, 154-167, 175, 179 and 191 remain rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
5. Claims 1-4, 56, 65, 93, 94, 154-167, 175, 179 and 191 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims were amended to recite that one of R8, R9 and R10 is
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and the other two of R8, R9 and R10 is
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. This proviso delineates a new subgenus that is not described in the original disclosure. Moreover, a sufficient number of compounds within this newly described subgenus is not present. For this reason, the inclusion of the proviso adds new matter to the claims.
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.
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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