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 .
Current Status
This action is responsive to the amended claims of 06/08/2026. Claims 1, 5-6, 9-11, 23, 25, 30, 35, 38-39, 42-47, 67-71, and 76-82 are pending. Claims 5, 9-11, 35, 38, 43-45, 47, 69-71, 76, 78, and 81 have been withdrawn. Claims 1, 6, 23, 25, 30, 39, 42, 46, 67-68, 77, 79-80, and 82 have been examined on the merits.
Election/Restrictions
The amendments of 06/08/2026 have overcome the prior art rejections of 03/09/2026. Thus, the Markush search has been further extended to the following species:
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and
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.
These species read on claims: 1, 6, 23, 25, 30, 39, 42, 46, 68, 77, 79-80, and 82.
Further, the species of independent claim 67 have been searched and have not retrieved any prior art (see SEARCH 6 of the attached search notes). Thus, this claim is examined here.
Claim 5, 9-11, 35, 38, 43-45, 47, 76, 78, and 81 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 01/27/2026.
Claim 69-71 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 01/27/2026.
Priority
The effective filing date is 08/08/2022.
Response to Arguments
Examiner acknowledges receipt of and has reviewed the claim amendments and remarks of 06/08/2026; no new matter is found.
The objection to claims 1, 6, 23, 25, 30, 38-39, 42-44, 46-47, 68, 77, and 79-82 is withdrawn since Applicant has added appropriate punctuation.
Note, Applicant has also taken care of the possible objection to claim 67 noted by Examiner in ¶13 of the previous action.
The 112(b) rejection of claim 1 and dependent claims 6, 23, 25, 30, 38-39, 42-44, 46-47, 68, 77, and 79-82 is withdrawn due to amendment. Applicant has struck from R8 the moiety “optionally substituted 7- to 10-membered saturated or partially unsaturated bicyclic heteroaryl”.
The 112(b) and 112(d) rejections of claim 47 are withdrawn in view of Applicant’s argument. Based on the definition of heteroaryl in the specification (¶16), the artisan would understand a ring A that is
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to fall within the intended scope of heteroaryl.
The 112(b) and 112(d) rejections of claim 77 are maintained. Applicant's arguments have been fully considered but they are not persuasive. Applicant argues that
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and
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are within the scope of
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and Rb is clearly defined in claim 1. Examiner disagrees, as stated in the previous action, because the moiety
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is defined as
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. This effectively replaces Rb with Rw. The ring B is either substituted with individual r instances of Rw or two Rw may combine to form a cycle. The cycle formed by the two instances of Rw may be further substituted by Rb. The moieties from which Rb is chosen differ from the moieties from which Rw is chosen (e.g., two Rb do not together form a cycle). Thus, the substitution of Rb directly on the ring B contradicts the very first line in claim 1:
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. Since Rb and Rw are chosen from different scopes of chemical moieties, the substitution of Rb directly on the ring B in claim 77 leaves it unclear what chemical moieties are intended to be substituted on ring B. Thus, the rejection is maintained below. Please see Examiner’s suggestion for how to overcome the rejection.
The 102(a)(1) rejection of claims 1, 6, 23, 30, 39, 42-44, 46-47, 77, and 79-82 over RN 2108300-36-1 is withdrawn since claim 1 is amended to where R7 is C1-6 aliphatic, not H.
The 102(a)(1) rejection of claims 1, 6, 23, 25, 30, 39, 42, 46, 77, 79-80, and 82 over RN 2248759-05-7 is withdrawn since the compound RN 2248759-05-7 was originally listed in claim 1 under “wherein the compound is not” RN 2248759-05-7.
The 102(a)(1) rejection of claims 1, 6, 30, 39, 46, 77, 79, and 82 over YASUO is withdrawn since claim 1 is amended so that X is either C or N, not O.
The 103 rejection of claims 1 and 68 over YASUO in view of CHAUDHARI is withdrawn since the compound of YASUO no longer reads on claim 1, by the amendment cited above.
Claim Rejections - 35 USC § 112 - Maintained
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.
Claim 77 is 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.
Claim 77 recites
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is selected from structures including “
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” and “
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”. This limitation lacks antecedent basis in the claim. Claim 77 depends from claim 1 wherein the moiety
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is defined as
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, effectively replacing Rb with Rw. Since claim 77 recites the above cycles substituted with Rb rather than Rw it is unclear which substituent is meant to be substituted on the ring B. In claim 1, Rb and Rw are chosen from different moieties. Thus, the recitation of “
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” and “
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” leaves the metes and bounds of the claim undefined rendering the claim indefinite.
To overcome: Applicant could replace the Rb moiety with Rw in the two claim 77 structures “
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” and “
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” .
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.
Claim 77 is 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. Claim 77 recites
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is selected from structures including “
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” and “
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”. Parent claim 1 recites the moiety
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is
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, effectively replacing Rb with Rw. Thus, Rb is not directly substituted on ring B. Further, Rb and Rw are chosen from different moieties. Thus, claim 77 recites a structure outside of the scope of parent claim 1 and does not properly further limit the claim. 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.
Response to Amendment
Claim Rejections - 35 USC § 102 – Necessitated by Amendment
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, 6, 23, 25, 30, 39, 42, 46, 77, 79-80, and 82 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by AURORA (Aurora Fine Chemicals, American Chemical Society Chemical Abstracts Service Registry No. 2785197-25-1 & 2785357-41-5, available 06 July 2022).
AURORA teaches RN 2785197-25-1
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wherein: ring A is phenyl, p is 0, Ra is not present, L is a covalent bond, R8 is substituted C1 aliphatic, X is -N(R7)-, R7 is C1 aliphatic, each R1-R5 is H,
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is
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, W is N, r is 0, and Rw is not present.
AURORA also teaches RN 2785357-41-5
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wherein: ring A is phenyl, p is 0, Ra is not present, L is a covalent bond, R8 is C3 aliphatic, X is -N(R7)-, R7 is C1 aliphatic, each R1-R5 is H,
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is
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, W is N, r is 0, and Rw is not present. Alternatively, L is a C1 aliphatic and R8 is C2 aliphatic; or L is a C2 aliphatic and R8 is a C1 aliphatic.
Conclusion
Claims 1, 6, 23, 25, 30, 39, 42, 46, 77, 79-80, and 82 are rejected.
Claim 68 is objected to due to its dependence on a rejected claim.
Claim 67 is allowable.
The close art for the species of claim 67 is AURORA, above. The compounds of AURORA have at least two structural differences from the species of claim 67. For example, comparing the AURORA compounds
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and
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to instant compound I-8
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the CF3 is in a different position on ring A and the methyl group on ring A is not found in the compounds of AURORA. Similarly, compared to instant compound I-10
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the ring A is not a heteroaryl and the substituents on ring A differ in position and/or chemical structure. Note, a majority of species in claim 67 share the ring A of compound I-10. Thus, the species of AURORA do not teach the instant compounds. Further, the other art of record does not anticipate or provide a motivation to modify a prior art compound to arrive at the instant compounds.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/S.E.B./Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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