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 .
Information Disclosure Statement
The information disclosure statement (IDS) filed February 17, 2025 was in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the IDS document was considered and a signed copy of the 1449 form is attached.
Priority
Due to the presence of intervening prior art, the disclosure of U.S. Provisional Application No. 63/482,453 was reviewed.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 63/482,453, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The provisional application provides a chemical Formula where instant Y2, Y4 and Y5 positions are required to be C, optionally substituted by R. Further, the formula in the provisional application requires “m” to be 1 or 2, such that one to two of instant Y2, Y4 and Y5 must be substituted by R (but all three positions cannot). For this reason, of the claims currently under consideration in this action, claims 1-4, 8 and 15 have an earliest effective filing date of January 30, 2024. Claims 5 and 6 are supported by the provisional application and examined with an effective filing date of January 31, 2023.
Restrictions/Elections
Applicant’s election of Group I, claims 1-15, drawn to a compound of formula (I) in the reply filed May 18, 2026 is acknowledged. Since Applicant’s reply did not present any specific traversal, the election is treated as an election without traverse. Further, Applicant’s election of compound 6F in the same reply is also acknowledged. The elected species reads on claims 1-6, 8 and 15 within the elected Group I.
In accordance with the MPEP, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species and the claims drawn to the elected species are allowable, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
As indicated above, the Examiner searched the claimed invention based on the elected species above, wherein: the elected species was not found to be allowable over the prior art. However, since the prior art is intervening art, for the sake of compact prosecution the search and consideration was expanded beyond the elected species to include the additional compounds described in the rejections under 35 USC 102 herein.
Status of Claims
Currently, claims 1-19 are pending in the instant application. Claims 7, 9-14 and 16-19 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.
Claims 1-6, 8 and 15 read on an elected invention and species and are under consideration herein to the extent they read on the elected species and expanded scope as described above.
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.
Claim(s) 1-4, 8 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xie et al. J. Med. Chem. (2023), 66(4), 2904-2917, which was published February 7, 2023.
The prior art teaches the following compounds in Scheme 1:
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.
All of compounds 3A-3M, 4A-4M, 5A-5M, 6A-6M, 7A-7M and 8A-8M anticipate instant Formula I. In particular, compound 6F is identical to the instantly elected species and reads on the claimed Formula where Y1 or Y5 is CR or CR1 where R or R1 is methyl; the other of Y1 or Y5 is CH; Y2 or Y4 is CR where R is
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; the other of Y2 or Y4 is CH; and Y3 is CH.
Claim(s) 1-6, 8 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by International Patent Document No. WO. 2021/053495.
The prior art is replete with structures that read on the instant claims including the following compounds depicted on pages 125:
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.
The compounds read on formula (I) where Y1 and Y5 are each CH, CR or CR1 where R or R1 is methyl or halogen; ; Y2 or Y4 is CR where R is
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,
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or
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; or Y2/Y4 is CH; and Y3 is CH or CR where R is
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,
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,
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, or
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. Since the prior art teaches all required structural features of the instantly claimed compounds, the claims are anticipated.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA L. OTTON whose telephone number is (571)270-8683. The examiner can normally be reached Monday - Friday, 8 am - 4 pm EST.
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, Mr. Fereydoun Sajjadi can be reached on 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA L OTTON/Primary Examiner, Art Unit 1699
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