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 1-16 and 20-22 are currently pending.
Election/Restriction
Applicant’s election without traverse of Group I (Claims 1-16, drawn to Compounds of Formulae IA, IB, IIA, and IIB) and the elected species of Example 12 in the reply filed on 4/13/2026 is acknowledged.
Claims 20-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Group II, there being no allowable generic or linking claim. The elected species was searched, as were compounds of Formula IA and IB, and all were found to be free of the art. The scope of search was expanded to compounds of Formula IIA. Thus, Claims 1-16 are being examined on the merits herein.
The requirement is deemed proper and is therefore made final.
Claim Objections
Claim 16 is objected to because “a compound according” should instead read “the compound according”. Appropriate correction is required.
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.
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.
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Verhoest (US20070155779).
Pfizer teaches Example 11:
PNG
media_image1.png
173
312
media_image1.png
Greyscale
on Page 20, in which the following definitions of Formula IIA apply: R11 is C1alkyl, Me; r is 0; and R12 and is H.
Allowable Subject Matter
The closest prior art to the compounds described in Claims 1-12 is found in Pfizer. Pfizer teaches the following compound as Example 1 on Page 38:
PNG
media_image2.png
200
328
media_image2.png
Greyscale
,
in which the following definitions of examined formula IB apply: X, Y, and Z are each CR4, CR5, and CR6, wherein R4, R5, and R6 are each H; R2 and R3 are H; and R1 is H. However, the compound and similar compounds taught in the prior art are excepted by the proviso recited in Claim 1 requiring either an R1 of SO2R7 or an R4 or R5 which is not selected from hydrogen, but rather a more complex chemical group which is not an bioisostere of hydrogen. Therefore, the compounds of Formulae IA and IB are free of the art.
Conclusion
Claims 1-12 are allowable. Claim 13 is rejected. Claim 16 is objected to.
Claims 14-15 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.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard G. Peckham whose telephone number is (703)756-4621. The examiner can normally be reached 8:30am - 4:30pm EST.
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, Kortney Klinkel can be reached on (571) 270-5239. 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.
/RICHARD GRANT PECKHAM/Examiner, Art Unit 1627
/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627
Prosecution Insights