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 .
Election/Restrictions
Applicant’s election of the invention of Group I (claims 1-20, 25-28, 30, 32-41, and 61-82) and the species of compound 43 as below (claims 39, 41-58, 71-74, 76, 77, and 81) in the reply filed on 11/21/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
PNG
media_image1.png
160
230
media_image1.png
Greyscale
Examiner has searched the elected compound and found it to be free of the art. Examiner has expanded the scope of her search to the full scope of formula (IA), and further wherein the methyl-substituted triazolyl is optionally further substituted, and found art as cited herein. Claims 39-41, 61-77, 79, 81, and 82 are within the scope of the search and are examined herein.
Claims 1-20, 25-28, 30, 32-38, 42-58, 78, and 80 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and/or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/21/2025.
Priority
Examiner acknowledges that, according to the Filing receipt received 12/21/2024, that the instant application 18/356,166 filed 07/20/2023 claims domestic benefit of U.S. provisional application 63/391,630 filed 07/22/2022.
However, the limitations of the instant claims are not adequately supported or enabled in the manner provided by 35 U.S.C. 112(a) or pre-AIA U.S.C. 112, first paragraph by 63/391,630. More specifically, the limitations of each and every compound of claim 39 are not taught or suggested in their entirety. As such, claim 39 has been awarded the effective filing date of 07/20/2023.
Information Disclosure Statement
The Information Disclosure Statements filed on 02/23/2024, 08/01/2024, and 08/14/2024 are in compliance with the provisions of 37 CFR 1.97 and have been considered in full except for references which have been lined through. A signed copy of list of references cited from the IDS is included with this Office Action. Examiner notes that a copy of WO2018178384 was not provided with the IDS filed 02/23/2024 and has not been considered.
Specification
The disclosure is objected to because of the following informalities:
Paragraph [0030]: “hydroxy,” should read “hydroxy.”
Paragraph [00130]: “(where t is 1 or 2),” should read “(where t is 1 or 2).”
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The abstract of the disclosure is objected to because the comma after the structure of formula (II) should be a period. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 39 and 71 are objected to because of the following informalities:
Claim 39 does not end in a period;
Claim 71, page 55, is missing punctuation (semi-colon or comma) after the following line:
PNG
media_image2.png
53
607
media_image2.png
Greyscale
.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 41 and 61-77 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 61 and 71 recite “wherein Y1, Y2, Y3, and Y4 are not simultaneously N”. It is unclear whether this means that all of Y1, Y2, Y3, and Y4 cannot simultaneously be N or if, for example, Y3 and Y4 cannot simultaneously be N. If the former is true, Examiner suggests amending the claim to recite “are not all simultaneously N” for clarity.
Claims 61 (on page 49) and 71 (on page 54) recite “the ring”. This limitation lacks antecedent basis as it is unclear which ring is being referred to. Claims 62-70 and 72-77 do not clarify the limitation at issue and are also rejected.
Claim 61 recites “A, B and E are independently selected from C, N, O, and S”. However, A, B, and E cannot be C because its valence of 4 would not be satisfied without another substituent. Claim 63 recites similar language and claims 62 and 66-70 do not clarify the limitation at issue.
Claim 72 recites “each of R2 and R3, when present, is”. This causes confusion as, per claim 71, R2 and R3 cannot be absent.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 66-70 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 66-68 recite that the A-B-D-E-N ring is “optionally substituted”. This limitation is broader in scope than claim 61, which recites a list of optional substituents rather than optional substituents generally.
Claims 69 and 70 recite that either Y1 and Y2 or Y3 and Y4 are an “optionally substituted fused ring” or an “optionally substituted fused 5- to 6-membered heteroaryl… or 5- to-6-membered heterocycloalkyl”. These claims are broader in scope than claim 61 from which both claims directly or indirectly depend. Claim 61 recites particular subgenuses of fused rings, while claim 69 recites “fused ring” generally. Claim 61 recites a list of optional substituents of the fused rings while claims 69 and 70 recited that the fused rings are “optionally substituted” generally.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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.
Claims 39-41, 61-77, 79, 81, and 82 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for pharmaceutically acceptable salts, does not reasonably provide enablement for solvates. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The claims are drawn to pharmaceutically acceptable salts and solvates of the claimed compounds. However, the numerous examples presented all failed to produce a solvate. These cannot be simply willed into existence and are considered unpredictable in the art. As was stated in Morton International Inc. v. Cardinal Chemical Co., 28 USPQ2d 1190 “The specification purports to teach, with over fifty examples, the preparation of the claimed compounds with the required connectivity.” Hence, applicants must show that solvates can be made, or limit the claims accordingly.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 41 and 61-68 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Teng et al. (WO 2023205173 A1; effectively filed 20 April 2022).
Teng et al. discloses the following compound (page 146).
PNG
media_image3.png
160
258
media_image3.png
Greyscale
The compound is within the scope of formula (I) wherein R1 is methyl, R2 and R3 are hydrogen, Y1 and Y4 are CH, Y3 is C substituted by halogen, Y2 is N, and the A-B-D-E-N ring is the moiety as shown in claim 68 optionally substituted by NH2.
Claim 41 is rejected for necessarily requiring the above compound.
Claim(s) 39 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wang et al. (WO 2024152710 A1; effectively filed 20 Jan 2023; IDS filed 08/14/2024). The effective filing date of claim 39 is 20 July 2023.
Wang et al. discloses the following compounds (p. 38).
PNG
media_image4.png
206
484
media_image4.png
Greyscale
These compounds are identical to compounds 75 and 130 as in claim 39.
Claim(s) 39 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Willwacher et al. (WO 2024133014 A1; effectively filed 2022; IDS filed 08/01/2024). The effective filing date of claim 39 is 20 July 2023.
Willwacher et al. discloses the following compound (p. 109).
PNG
media_image5.png
212
218
media_image5.png
Greyscale
This compound is identical to compound 11 as in claim 39.
Claim(s) 39 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Willwacher et al. (WO 2024188734 A1; effectively filed 13 March 2023). The effective filing date of claim 39 is 20 July 2023.
Willwacher et al. discloses the following compounds (p. 88, 89, 92, 99).
PNG
media_image6.png
626
493
media_image6.png
Greyscale
These compounds are identical to compounds 69, 70, 100, and 130 as in claim 39.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 41 and 61-68 is/are rejected under 35 U.S.C. 103 as being unpatentable over Teng et al. (WO 2023205173 A1; effectively filed 20 April 2022).
Teng et al. discloses the following compounds (p. 139, 142, 146).
PNG
media_image7.png
320
507
media_image7.png
Greyscale
Compound 50 is cited in the above 35 U.S.C. 102 rejections. The remaining compounds differ from the instant invention wherein R1 is hydrogen. However, it is generally noted that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Lincoln, 126 U.S.P.Q. 477, 53 U.S. P.Q. 40 (C.C.P.A. 1942); In re Druey, 319 F.2d 237, 138 U.S.P.Q. 39 (C.C. P.A. 1963); In re Lohr, 317 F.2d 388, 137 U.S.P.Q. 548 (C.C.P.A. 1963); In re Hoeksema, 399 F.2d 269, 158 U.S.P.Q. 598 (C.C.P.A. 1968); In re Wood, 582 F.2d 638, 199 U.S. P.Q. 137 (C.C.P.A. 1978); In re Hoke, 560 F.2d 436, 195 U.S.P.Q. 148 (C.C.P.A. 1977); Ex parte Fauque, 121 U.S.P.Q. 425 (P.O.B.A. 1954); Ex parte Henkel, 130 U.S.P.Q. 474, (P.O.B.A. 1960). Given that applicant did not provide unexpected or unobvious results of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to substitute the “H” group to a “methyl” such as in Compound 50.
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (WO 2024152710 A1; effectively filed 20 Jan 2023; IDS filed 08/14/2024).
Wang et al. discloses the following compounds (p. 18, 28, 38).
PNG
media_image8.png
344
461
media_image8.png
Greyscale
These compounds differ from those of the instant claim 39 in that they are position isomers or obvious variants of the claimed invention.
Compounds 38, 40, 71, 115, and 127 of claim 39 are prima facie obvious over Wang et al. because they are position isomers, wherein the halogen substituent on either the phenyl or pyridinyl is in a different position. The MPEP 2144.09 states “Compounds which are… position isomers (compounds having the same radicals in physically different positions on the same nucleus… are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).” Regarding position isomers and “ring-walking” absent unexpected results, see In re Jones, 162 F.2d 638, 74 USPQ 152 (CCPA 1947).
Compounds 66 and 67 of claim 39 are prima facie obvious over Wang et al. because it is generally noted that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Lincoln, 126 U.S.P.Q. 477, 53 U.S. P.Q. 40 (C.C.P.A. 1942); In re Druey, 319 F.2d 237, 138 U.S.P.Q. 39 (C.C. P.A. 1963); In re Lohr, 317 F.2d 388, 137 U.S.P.Q. 548 (C.C.P.A. 1963); In re Hoeksema, 399 F.2d 269, 158 U.S.P.Q. 598 (C.C.P.A. 1968); In re Wood, 582 F.2d 638, 199 U.S. P.Q. 137 (C.C.P.A. 1978); In re Hoke, 560 F.2d 436, 195 U.S.P.Q. 148 (C.C.P.A. 1977); Ex parte Fauque, 121 U.S.P.Q. 425 (P.O.B.A. 1954); Ex parte Henkel, 130 U.S.P.Q. 474, (P.O.B.A. 1960). Given that applicant did not provide unexpected or unobvious results of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to substitute the “H” group to a “methyl”.
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Willwacher et al. (WO 2024133014 A1; effectively filed 2022; IDS filed 08/01/2024).
Willwacher et al. discloses the following compounds (p. 106, 109)
PNG
media_image9.png
212
441
media_image9.png
Greyscale
Compounds 46 and 115 of claim 39 differ from the above compounds in that they are position isomers or obvious variants of the claimed invention.
Compound 115 is prima facie obvious over Wang et al. because it is a position isomer, wherein the halogen substituent on the pyridinyl is in a different position. The MPEP 2144.09 states “Compounds which are… position isomers (compounds having the same radicals in physically different positions on the same nucleus… are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).” Regarding position isomers and “ring-walking” absent unexpected results, see In re Jones, 162 F.2d 638, 74 USPQ 152 (CCPA 1947).
Compound 46 is prima facie obvious over Wang et al. because it is generally noted that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Lincoln, 126 U.S.P.Q. 477, 53 U.S. P.Q. 40 (C.C.P.A. 1942); In re Druey, 319 F.2d 237, 138 U.S.P.Q. 39 (C.C. P.A. 1963); In re Lohr, 317 F.2d 388, 137 U.S.P.Q. 548 (C.C.P.A. 1963); In re Hoeksema, 399 F.2d 269, 158 U.S.P.Q. 598 (C.C.P.A. 1968); In re Wood, 582 F.2d 638, 199 U.S. P.Q. 137 (C.C.P.A. 1978); In re Hoke, 560 F.2d 436, 195 U.S.P.Q. 148 (C.C.P.A. 1977); Ex parte Fauque, 121 U.S.P.Q. 425 (P.O.B.A. 1954); Ex parte Henkel, 130 U.S.P.Q. 474, (P.O.B.A. 1960). Given that applicant did not provide unexpected or unobvious results of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to substitute the “H” group to a “methyl”.
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Willwacher et al. (WO 2024188734 A1; effectively filed 13 March 2023).
Willwacher et al. discloses the following compounds (p. 89, 91).
PNG
media_image10.png
272
494
media_image10.png
Greyscale
Compounds 30 and 127 of claim 39 differ from the above compounds in that they are position isomers or obvious variants of the claimed invention.
Compound 127 is prima facie obvious over Wang et al. because it is a position isomer, wherein the halogen substituent on the pyridinyl is in a different position. The MPEP 2144.09 states “Compounds which are… position isomers (compounds having the same radicals in physically different positions on the same nucleus… are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).” Regarding position isomers and “ring-walking” absent unexpected results, see In re Jones, 162 F.2d 638, 74 USPQ 152 (CCPA 1947).
Compound 30 is prima facie obvious over Wang et al. because chloro and fluoro are obvious variants of each other. Ex parte Wiseman, 98 USPQ 277 (1953). As such, it would be prima facie obvious for one of ordinary skill in the art to substitute a fluoro with a chloro with the expectation of similar results.
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Willwacher et al. (WO 2024133014 A1; effectively filed 2022; IDS filed 08/01/2024) and further in view of Patani et al. (Chemical Reviews, 1996).
Willwacher et al. discloses the following compounds (p. 53, 109).
PNG
media_image11.png
212
210
media_image11.png
Greyscale
PNG
media_image5.png
212
218
media_image5.png
Greyscale
The compounds differ from instantly claimed compounds 39 and 53 in that they lack a fluorine substituent on the phenyl. This limitation is obvious over Patani et al.
Patani et al. teaches that substitution of hydrogen for fluorine is one of the most common bioisosteric replacements in the art, which leads to changes in pharmacological properties such as binding affinity (p. 3149).
Compounds 53 and 39 would be prima facie obvious to one of ordinary skill in the art. One of ordinary skill in the art would be motivated to substitute hydrogen with fluorine on the phenyl group of the compounds of Willwacher et al., with reasonable expectation of success, in order to enhance its pharmacological properties using a well-known bioisosteric replacement.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELINE E BRAUN whose telephone number is (703)756-4533. The examiner can normally be reached M-F 8:30am-5:00pm ET.
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, 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.
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.
/M.E.B./Examiner, Art Unit 1624 12/10/2025
/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624