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 .
Status of Claims
Claims 11-21 are pending in the instant application.
Claims 1-10 have been canceled.
Withdrawn Rejections/Objections
Applicant’s replacement drawings received April 29th, 2026 are sufficient to overcome the objection to the drawings raised in the non-final rejection mailed January 12th, 2026. This objection is hereby withdrawn.
Applicant’s amendment is sufficient to overcome the rejection of Claims 11-12 and 17-21 under 35 U.S.C. 112(a). This rejection is hereby withdrawn.
Applicant’s amendment is sufficient to overcome the rejection of Claims 11 and 13-16 under 35 U.S.C. 112(b). This rejection is hereby withdrawn.
Applicant’s amendment is sufficient to overcome the rejection of Claims 14-16 under 35 U.S.C. 101. This rejection is hereby withdrawn.
Applicant has traversed the rejection of Claims 11-13 and 17-21 under 35 U.S.C. 103 as being unpatentable over Guo et. al. (WO 00/31058; cited in non-final rejection mailed January 12th, 2026; machine translation provided; hereinafter referred to as Guo) in view of Meanwell (“Fluorine and Fluorinated Motifs in the Design and Application of Bioisosteres for Drug Design,” Journal of Medicinal Chemistry, 61, 5822-5880, 2018; cited in non-final rejection mailed January 12th, 2026; hereinafter referred to as Meanwell).
Applicant has traversed this rejection the basis the Guo does not disclose pharmacokinetic data, and that the instantly claimed compounds “demonstrate unexpectedly superior anxiolytic efficacy and favorable pharmacokinetic properties for the F-substituted compounds,” as stated at Page 14 of the remarks filed April 29th, 2026. Applicant points to the non-limiting examples in the instant specification as well as the Declaration under 37 CFR 1.132 filed April 29th, 2026 in support of this statement. The examiner finds this argument persuasive. In particular, the second paragraph of Page 4 of the Declaration summarizes the unexpected results of the instantly claimed compounds over the compound taught by Guo including a 31.5% increase in peak plasma concentration, a 58.8% increase in total systemic exposure and an 87.8% increase in half-life.
Accordingly, this rejection is hereby withdrawn.
Applicant has traversed the rejection of Claims 11-12 and 17-21 under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 11,358,954 (cited in non-final rejection mailed January 12th, 2026) in view of Meanwell.
In Applicant’s traversal, Applicant points out that in addition to the difference in R1, Compound A taught in U.S. Patent No. ’944 further differs from the instantly disclosed Compound 8 in deuterium substitution. Further, at Page 17 of the remarks filed April 29th, 2026, Applicant notes that Compound 2, in which the deuterium atoms present in Compound 8 are substituted for hydrogen atoms, “exhibits superior anxiolytic and pharmacokinetic effects compared to the deuterium-substituted analog.” Applicant concludes from this at Page 19 of the remarks, that “This result demonstrates that replacing hydrogen substitution with deuterium substitution does not provide both pharmacokinetic and anxiolytic effects advantages.” Applicant reasons that one of ordinary skill in the art would reasonably expect Compound A, taught by U.S. Patent No. ‘944, to be inferior to instantly claimed Compound 8 in terms of both anxiolytic and pharmacokinetic effects.
The examiner finds this argument persuasive. Accordingly, this rejection is hereby withdrawn.
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 12 and 17 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation “R2 is C2-C5 linear alkylene that is unsubstituted”, and the claim also recites “optionally, R2 is C3-C4 linear alkylene that is unsubstituted; and further optionally, R2 is C3 linear alkylene that is unsubstituted” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 17, the phrase "X is halogen, preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the term “preferably” are part of the claimed invention. See MPEP § 2173.05(d).
Conclusion
Claims 12 and 17 are rejected.
Claims 11, 13-16, and 18-21 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL JOHN BURKETT whose telephone number is (703)756-5390. The examiner can normally be reached Monday - Friday.
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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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/D.J.B./Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624
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