DETAILED ACTION
This office action is in response to the Applicant’s filing dated May 21st, 2026.
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 .
Priority
This application is a 371 of PCT/CN2022/111129 filed on August 9th, 2022; and claims benefit of foreign priority of PCT/CN2021/111481 filed on August 9th, 2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-12 are pending in the instant application. Acknowledgement is made of Applicant’s remarks filed on May 21st, 2026.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on May 21st, 2026 is acknowledged.
Claims 10 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 21st, 2026.
Applicant’s election without traverse of Compound 545 shown below in the reply filed on May 21st, 2026 is acknowledged:
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Which is a species of genus Formula (I) wherein L is cycloalkyl, specifically spiro[3.3]heptane; wherein X1 is N; wherein X2, X3, X4 and X5 are C; wherein m and n are 1; wherein Ra is substituted heterocyclyl, specifically 2,6-dimethylmorpholine; wherein Rb is H; wherein Rc is attached to the C atom of X5, and is unsubstituted alkyl, specifically ethyl; and wherein Rd is an unsubstituted heteroatom, specifically NH2.
A prior art search was conducted for the elected species.
This compound was found free of prior art.
Therefore, the Examiner expanded search to encompass Compound 202 shown below:
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Which is a species of genus Formula (I) wherein L is C; wherein X1, X2, X3, X4 and X5 are C; wherein m is 0; wherein n is 1; wherein Ra is an unsubstituted alkyl, specifically t-butyl; wherein Rb is H; and wherein Rd is a substituted alkyl, specifically C1-alkyl substituted by 1-pyrrolidine.
This search retrieved prior art. Therefore, the Examiner’s search will not be extended unnecessarily to additional species of genus Formula (I) in/for/during this Office action.
Claims 3 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 21st, 2026.
Claims 1-2, 4-9 and 11 read on the elected species and will be examined herein.
Claim Objections
Claims 5, 7 and 9 are objected to as being dependent upon a rejected base claim.
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, 4, 6, 8 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cross et al (GB 1306450 A).
Regarding claims 1-2, 4, 6, 8 and 11, Cross teaches N-(4-tert-butylphenyl)-2-pyrrolidinoethylamine shown below (page 6, lines 47-48):
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which is a compound of Formula R1-NH-Y of Cross (page 2, right column, lines 105-108) wherein R1 is 4-alkyl-phenyl (e.g. t-butyl-phenyl; page 2, right column, lines 90-93); and wherein Y is -Alk-NR2R3, and Alk has 2 carbon atoms and R2 and R3 together with the N to which they are attached form a 4 carbon heterocycle (page 1, left column, lines 32-36, right column, lines 37-44). This is the compound expanded to by the examiner. Cross provides a synthetic method of production of the compound, and physical characterization consistent with possession (e.g. boiling point; page 6, lines 47-48).
N-(4-tert-butylphenyl)-2-pyrrolidinoethylamine is a synonym for instantly claimed Compound 202. “When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability.” In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980), see MPEP § 2121(I). “In order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility need be disclosed by the reference.” In re Schoenwald, 964 F.2d 1122, 1124, 22 USPQ2d 1671, 1673 (Fed. Cir. 1992), see MPEP § 2122; “The court found that the claim was anticipated since the compound and a process of making it were taught by the reference”.
Thus, the teachings of Cross anticipate the compound of instant claims 1-2, 4, 6, 8 and 11.
Conclusion
Claims 1-2, 4, 6, 8 and 11 are rejected.
Claims 5, 7 and 9 are objected to.
No claim is allowed.
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/C.L.J./Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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