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 .
Current Status
This action is responsive to the amended claims of 01/27/2026. Claims 1, 5-6, 9-11, 23, 25, 30, 35, 38-39, 42-47, 67-71, and 76-82 are pending. Claims 76-82 are new. Claims 5, 9-11, 35, 45, 67, 69-71, 76, and 78 have been withdrawn. Claims 1, 6, 23, 25, 30, 38-39, 42-44, 46-47, 68, 77, and 79-82 have been examined on the merits.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1, 5-6, 9-11, 23, 25, 30, 35, 38-39, 42-47, 67-68, 76-82) and compound I-162 in the reply filed on 01/27/2026 is acknowledged.
A search for the elected compound I-162,
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, did not retrieve any prior art. Thus, the Markush search was extended to the following species:
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and
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.
The extended species read on claims 1, 6, 23, 25, 30, 38-39, 42-44, 46-47, 68, 77, and 79-82.
This search has prior art. Therefore, per Markush search practice, the Markush search will not be extended unnecessarily to additional species in this Office Action.
Claims 69-71 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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.
Claims 5, 9-11, 35, 45, 67, 76, and 78 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (i.e., not the extended species), there being no allowable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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/16/2023 and 09/12/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 1, 6, 23, 25, 30, 38-39, 42-44, 46-47, 68, 77, and 79-82 are objected to because of the following informalities. Appropriate correction is required.
Claim 1 recites a series of compound structures from which the instant compound is not. Please add appropriate punctuation to this list by adding a comma following each species (except the final one). Dependent claims 6, 23, 25, 30, 38-39, 42-44, 46-47, 68, 77, and 79-82 are similarly objected to since they do not rectify the issue.
Note: claim 67 is withdrawn; however, to expedite prosecution Examiner asks that Applicant kindly address the following issue. Claim 67 lacks commas between the recited species and lacks the word “and” preceding the final species.
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 1, 6, 23, 25, 30, 38-39, 42-44, 46-47, 68, 77, and 79-82 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.
Claim 1 recites R8 is “optionally substituted 7- to 10-membered saturated or partially unsaturated bicyclic heteroaryl”. However, it is unclear how an aromatic ring (heteroaryl) can be saturated or only partially unsaturated. Aromatic compounds are understood as unsaturated. Thus, a saturated or partially unsaturated (and therefore partially saturated) compound is contradictory to an aromatic compound (heteroaryl). Therefore, the metes and bounds of the claim are undefined rendering the claim indefinite. Dependent claims 6, 23, 25, 30, 38-39, 42-44, 46-47, 68, 77, and 79-82 are similarly rejected since they do not rectify the issue.
Note: To overcome, if Applicant intends to claim a heteroaryl, please strike “saturated or partially unsaturated” from the claim.
Claim 47 recites the ring A is
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. This limitation lacks antecedent basis in the claim. Claim 47 depends from claim 1 wherein ring A is defined as “5-6 membered monocyclic heteroaryl having 1-4 heteroatoms independently selected from nitrogen, oxygen, and sulfur”. The “1-4 heteroatoms” are understood to be ring atoms, not substituents on the ring itself. Claim 1 does not recite wherein ring A is optionally substituted. Further, claim 1 does not recite wherein Ra, L, or R8 may be oxo. Thus, a ring A substituted by an oxo group lacks antecedent basis in the claims. Therefore, the metes and bounds of the claim are undefined rendering the claim indefinite.
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.
Note: to overcome, Applicant could replace the Rb moiety in the recited structures with Rw.
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.
Claim 47 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 47 recites the ring A is
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. Parent claim 1 recites ring A is defined as “5-6 membered monocyclic heteroaryl having 1-4 heteroatoms independently selected from nitrogen, oxygen, and sulfur”. The “1-4 heteroatoms” are understood to be ring atoms, not substituents on the ring itself. Claim 1 does not recite wherein ring A is optionally substituted. Further, claim 1 does not recite wherein Ra, L, or R8 may be oxo. Thus, claim 47 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.
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. In claim 1, 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.
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.
Claims 1, 6, 23, 30, 39, 42-44, 46-47, 77, and 79-82 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RN 2108300-36-1 (American Chemical Society Chemical Abstracts Service Registry No. 2108300-36-1, available 04 Aug 2017).
Regarding claims 1, 6, 23, 30, 39, 42-44, 46, and 79-82, RN 2108300-36 teaches:
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wherein: ring A is phenyl, p is 1, Ra is C1 aliphatic (i.e., methyl), L is a covalent bond, R8 is C1 aliphatic (i.e., methyl), X is -N(R7)-, R7 is H, each R1-R5 is H,
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is
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, W is N, and r is 0 thus Rw is not present.
Regarding claim 47, RN 2108300-36 teaches
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is
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wherein Ra is C1 aliphatic (i.e., methyl), L is a covalent bond, R8 is C1 aliphatic (i.e., methyl).
Regarding claim 77, RN 2108300-36 teaches
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is
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.
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 RN 2248759-05-7 (American Chemical Society Chemical Abstracts Service Registry No. 2248759-05-7, available 16 Nov 2018; provided IDS of 10/16/2023).
Regarding claims 1, 6, 23, 25, 30, 39, 42, 46, 79-80, and 82, RN 2248759-05-7 teaches
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wherein: ring A is 6-membered monocyclic heteroaryl having 1 heteroatom N, p is 0 thus Ra is not present, L is a covalent bond, R8 is optionally substituted C1 aliphatic wherein the substituent is -N(CH3)2, 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, and r is 0 thus Rw is not present. Note, since the claims do not define which moieties fall under the group of substituents covered by “optionally substituted”, Examiner understands any possible substituent moiety as reading on the claims.
Regarding claim 77, RN 2248759-05-7 teaches
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Claim 1, 6, 30, 39, 46, 77, 79, and 82 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by YASUO (CN 1054123, pub. 2000). A machine translation of YASUO is cited below for text portions and is provided attached to this action.
Note: this reference was found incidental to the search for the extended Markush species, above. It is applied here in an effort to promote compact prosecution, but does not indicate that the full scope of the claims has been examined.
Regarding claims 1, 6, 30, 39, 46, 79, and 82, YASUO teaches compounds 14 and 15 (Pg. 13 Table), reproduced here for clarity:
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and
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. In both compounds 14 & 15, ring A is phenyl, p is 0 thus Ra is not present, L is a covalent bond, R8 is halogen (Cl), X is -O-, each R1-R5 is H,
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is
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, W is N, and r is 0 thus Rw is not present.
Regarding claim 77, YASUO compounds 14 & 15 teach
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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.
Claims 1 and 68 are rejected under 35 U.S.C. 103 as being unpatentable over YASUO (CN 1054123, pub. 2000) as applied to claim 1 above, further in view of CHAUDHARI (Chaudhari, S.P. & Patil, P.S., Internation Journal of Advances in Pharmacy, Biology, and Chemistry, 2012, 1(1), 21-34). A machine translation of YASUO is cited below for text portions and is provided attached to this action.
Note: YASUO was found incidental to the search for the extended Markush species, above. It is applied here in an effort to promote compact prosecution, but does not indicate that the full scope of the claims has been examined.
Determining the Scope and Contents of the Prior Art:
YASUO teaches the compounds 14 & 15 (above) which teach the instant claim 1, see ¶25. YASUO further teaches the compounds of the invention are drugs that improve memory impairment (Pg. 34 ¶0007) and the drug was prepared orally for administration to mice before a memory test (Pg. 92 ¶138). YASUO teaches the compounds of the invention have excellent activity in improving memory disorder compared to conventional drugs with deficient or insufficient activity (Pg. 95 ¶143).
CHAUDHARI teaches dosage forms (i.e., pharmaceutical compositions)
comprising the active pharmaceutical ingredient and excipients (i.e., carrier) are formulated together to improve patient acceptance (Pg. 21 Abstract & Intro P1). CHAUDHARI teaches excipients must be inert to the human body (Pg. 22 Right Col. P3), i.e., the excipients are pharmaceutically acceptable.
Ascertaining the Differences Between the Prior Art and the Claims at Issue:
YASUO does not teach a pharmaceutical composition further comprising a pharmaceutically acceptable carrier.
CHAUDHARI does not teach the instant compound.
Resolving the Level of Ordinary Skill in the Pertinent Art:
The level of ordinary skill in the art is represented by an artisan who has sufficient background in the development of pharmaceutical compositions useful for delivery of drugs and possesses the technical knowledge necessary to make adjustments to the composition to optimize/enhance the delivery. Said artisan has also reviewed the problems in the art regarding pharmaceutical excipients and carriers and understands the solutions that are widely-known in the art.
Considering Objective Evidence Present in the Application Indicating Obviousness or Nonobviousness:
The instant claims are prima facie obvious in light of the combination of references YASUO and CHAUDHARI.
The artisan would be motivated to formulate the compounds 14 and 15 in a
pharmaceutical composition also comprising a pharmaceutically acceptable excipient/carrier in order to increase patient acceptance of the compound since YASUO teaches the compounds are orally administered to subjects (Pg. 92 ¶138) to improve memory (Pg. 95 ¶143). The artisan would have an expectation of success since CHAUDHARI teaches formulations with excipients increase patient acceptance (Pg. 21 Abstract & Intro P1).
Conclusion
Claims 1, 6, 23, 25, 30, 38-39, 42-44, 46-47, 68, 77, and 79-82 are rejected.
Note: a search for the elected species did not retrieve art, so the search was expanded to the following structure wherein the R2 moiety is a phenyl or any heterocycle/aryl:
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. This search also did not retrieve any prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA ELIZABETH BELL whose telephone number is (703)756-5372. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/S.E.B./Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625