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 .
Claim Status
Claims 1-2, 7-9, 12, 14, 17, 23, 25, 28, 39-43, 46, 50, 53 and 56 are pending. Claims 42-43, 46, 50, 53 and 56 are withdrawn. Claims 1-2, 8-9, 14, 17, 23, 25 and 41 are rejected. Claims 7, 12, 28 and 39 are objected to. Claim 40 is allowed.
Election/Restrictions
Applicant’s election without traverse of Group I and the elected species in the reply filed on 06/02/2026 is acknowledged.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicant’s elected species appears free of the art. Therefore, according to MPEP 803.02: should the elected species be found allowable, the examination of the Markush-type claim will be extended. If the examination is extended and a non-elected species found not allowable, the Markush-type claim shall be rejected and claims to the non-elected invention held withdrawn from further consideration. The examination of the Markush-type claims has been extended to include the scope of claims 7, 12 and 40 as well as the scope of claims 1-2, 7-9, 14, 17, 23, 25, 28, 39 and 41 where the compound is one of the following:
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These species of which are anticipated and not allowable under 35 USC 102. Any subject matter discussed outside this scope was discovered incidental to the expanded search and is presented in the interest of compact prosecution.
As a non-elected species has been found not allowable, the Markush-type claims have been rejected and claims to the nonelected invention are held withdrawn from further consideration. Examination has been limited to claims embracing the elected species which are claims 1-2, 7-9, 12, 14, 17, 23, 25, 28, 39-41. Claims 1-2, 7-9, 14, 17, 23, 25, 28, 39 and 41 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since the nonelected species has not been found allowable, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Claims 42-43, 46, 50, 53 and 56 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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, 14, 17, 23, 25 and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1323398-51-1, which entered Registry on August 25th, 2011 (previously cited).
CAS Registry No. 1323398-51-1 is drawn to N-(3,4-Dihydro-2H-pyrrol-5-yl)-N-(2-ethylphenyl)-N'-phenylurea, which has the following structure:
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The prior art compound reads on instant claims 1-2, 14, 17, 23, 25 and 41 and is embraced by instant formula (I) or I-4a where R10 is C2 alkyl, W2 is C(R2), R2 is hydrogen, R3 hydrogen, W4 is C(R4), R4 is hydrogen, W5 is C(R5), R5 is hydrogen, L1 is a bond, R9 is an unsubstituted heterocycloalkyl, W6 is C(R6), R6 is hydrogen, W7 is C(R7), R7 is hydrogen, and R8 is as listed in claim 17 (z8 is 0).
Regarding instant claim(s) 41, which is drawn to a pharmaceutical composition comprising the compound and a pharmaceutically acceptable excipient, the CAS Registry entry includes predicted properties including mass and molar solubilities at varying pH values. MPEP 2131.02 states:
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015)
In this situation, a person having ordinary skill in the art in viewing the properties of the Registry entry would envisage a composition with the compound and water, which is a pharmaceutically acceptable excipient.
Claims 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1348484-72-9, which entered Registry on December 4th, 2011 (cited in the IDS filed 06/11/2025).
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The prior art compound reads on instant claims 8-9 and is embraced by Formula II-1a where L1 is unsubstituted C3 alkylene, R9 is an unsubstituted heterocycloalkyl, R10 is OR10D, R10D is unsubstituted alkyl, R2 is hydrogen, R3 hydrogen, R4 is halogen, R5 is hydrogen, R6 is halogen, and R8 is as listed in claim 8 (z8 is 0).
Allowable Subject Matter
Claim 40 is allowed.
Claims 7, 12, 28 and 39 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLI A CHICKS whose telephone number is (571)270-0582. The examiner can normally be reached M-Th 7 a.m.- 5 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H Alstrum-Acevedo can be reached at (571)272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.C./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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