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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Poland on 08/25/2022. It is noted, however, that applicant has not filed a certified copy of the P.442089 application as required by 37 CFR 1.55.
Applicant is advised of possible benefits under 35 U.S.C. 119(a)-(d) and (f), wherein an application for patent filed in the United States may be entitled to claim priority to an application filed in a foreign country.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
This application has PRO 63/400,902, dated 08/25/2022.
Information Disclosure Statement
An information disclosure statement (IDS) has not been submitted for this application at the time of this examination, and therefore NO information disclosure statements are being considered by the examiner.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-20 in the reply filed 01/21/2026 is acknowledged. Applicants elected the species of Example 103, 3-((4-(5-chloro-3-fluoro-2-((4-methylmorpholin-2-yl)methyl)phenyl)pyrrolo[2, 1-f][1,2,4]triazin-6-yl)methyl)-1-methylpyrimidine-2,4(1H, 3H)-dione hydrochloride. claims 1-3, 8, 9, 12, 13, 15 and 20 read on the elected species (Below).
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As per MPEP 803.02, the Examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species of Example 103 makes a contribution over the prior art of record. Therefore, according to MPEP 803.02: should the elected species appear allowable, the search of the Markush-type claim will be extended. The Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration.
It has been determined that the entire scope claimed is not patentable.
Status of the Application
Claims 1-46 are pending. Claims 21-46 have been withdrawn from further consideration as being drawn to a nonelected invention. Claims 4-7, 10-11, 14 have been withdrawn from further consideration as being drawn to a non-elected species. Claims 1-3, 8, 9, 12, 13, 15 and 20 are examined herein insofar as they read on the elected invention and species.
Specification
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.
Claim Interpretation
Claim 3 does not define the variable L3 while other variables are defined. Given claim 3 depends from claim 1, claim 3 is interpreted as using the definition of L3 provided in claim 1.
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.
Claims 1-2, 8, 9, and 20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by CAplus Registry Number: RN 1381443-96-4. [Database Registry Chemical Abstracts Service, Columbus, Ohio, Accession No. RN 1329503-06-1, Entered STN: 07 Sep 2011].
CAS RN 1329503-06-1 anticipates the structural limitations of formula I of the instant claims where W is CR4 wherein R4 is H, L3 is C=O, R3 is OH, R2 and RS are H, RI is NH2, ring A is structure
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, wherein X and Y are C(-Rc) wherein Rc is Cl, L7 is O-C1-C3 alkylene and R7 is an N containing heterocycle.
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Registry number 1329503-06-1 is available as prior art as of 7 Sep 2011, the date it was indexed into the REGISTRY database.
Regarding the compositions of claim 20, comprising the anticipatory compounds and an excipient, the Registry entry for Registry no. 1329503-06-1 discloses a mass solubility of 0.19 g/L, in unbuffered water at pH 3.39 and °25C. This teaching of water anticipates the claimed composition, wherein the compounds are present with an excipient (i.e., water).
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See MPEP § 2128 “Printed Publications” as prior art. An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. § 102 (a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981): since this date represents the date that each compound entered the REGISTRY database on STN, this represents the date that each compound was made accessible to the public.
It is further noted that for the purposes of determining if a reference is a “printed publication,” MPEP § 2128 (I) states the following:
A reference is proven to be a "printed publication" "upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it." In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981) (quoting I.C.E. Corp. v. Armco Steel Corp., 250 F. Supp. 738, 743, 148 USPQ 537, 540 (SDNY 1966)) ("We agree that ‘printed publication’ should be approached as a unitary concept.
where “prior art disclosures…on an on-line database are considered to be publicly available as of the date the item was publicly posted.” Since each of the database entries above lists the date that each compound was entered into the on-line database, the compounds were made publicly available as of that date in each citation.
Allowable Subject Matter
Claims 3, 12-13 and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Claims 1-2, 8, 9, and 20 are rejected. Claims 3, 12-13 and 15 are objected to.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNESTO VALLE JR whose telephone number is (703)756-5356. The examiner can normally be reached 0730-1700 M-F EST, 1st Friday off.
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, Adam C Milligan can be reached at 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.V./Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623
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