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 .
Claims 168-196 are new and pending. Claims 168-177, 179, 180, 182, 183, 185, 186, 188, 189, 191, 192, 194, and 195 are drawn to group I while other method claims fall under group VII.
Applicant’s election without traverse of group I, drawn to compounds of the formula I’’’ and simple compositions thereof and the elected species (compound 2) in the reply filed on 4/17/2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 170,172,174,175,178, 181, and 184-196 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 168-169,171,173,176, 177,179, 180, 182, and 183 is contained herein. Applicant’s elected species was found free of the art and the search extended to cover general formula Ia-1’’’.
Priority
This application claims priority under 35 U.S.C. § 119(e) to U.S. Provisional Patent App No. 63/341,975, filed 5/13/2022.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 168-169,171,173,176, 177,179, 180, 182, and 183 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 168-172, 174-178, and 180-182 of copending Application No. 19/235,393. Although the conflicting claims are not identical, they are not patentably distinct from each other because there is significant overlap between the two applications.
The claimed elected species (making compositions thereof routine and known in the art) and some other species of instant claim 176 are also recited in the copending application (see claim 178 for example, compound 2). These species in the copending application also would anticipate the claimed genus structure of the instant application (claim 168) and instant claims. Thus the claimed subject matter would have been anticipated by the copending application and the claims would not be considered independent and distinct.
Additionally, the claimed genus is subgeneric to what is described in copending claim 1 (note in particular the narrowing of variable R1 herein excluding -CN) where the scope of the copending application’s genus is substantially small that one of ordinary skill would have readily arrived at the claimed subject matter.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 179-180 and 182-183 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The preamble of claims 179 and 182 state “having the structure of Compound 2”. However there is no compound designated as “Compound 2” in the claims. Is the shown species in these claims the intended compound 2 or something else? Therefore the claim and claims dependent on it are rejected for lack of clarity. Correction is required. See In re Zletz, 13 USPQ2d 1320, 1322, “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Conclusion
No claims are allowed. However the claimed compounds appear to be novel and not obvious over the art. The closest art of record is described in WO 2022/166890 wherein some species of formula Ia-1’’’ have the limitation R1 = alkyl. Normally the replacement of alkyl for H is an obvious variant. However Applicants have shown that the claimed compounds wherein R1 = H or F is superior in reference to low hERG inhibition compared to the alkyl or other halogenated analogs described in the art (see response to restriction requirement filed 12/15/2025).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
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