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 .
Claims 1-13 are pending in the instant application. Claims 10-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected subject matter. The withdrawn subject matter is patentably distinct from the elected subject matter as it differs in structure and element and would require separate search considerations. In addition, a reference which anticipates one group would not render obvious the other. Claims 1-9 are rejected.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, and the species of compound M001074 in the response filed on December 5, 2025 is acknowledged. The restriction requirements are still deemed proper and are hereby made final.
The examiner will follow the guidelines of MPEP 803.02 wherein once a species is elected, it is examined for compliance with all applicable statutes for patentability and if compliance is found, then the examination is expanded to a reasonable number of elected species to determine whether they also comply with the statute. The examiner will determine whether the entire scope of the claims is patentable according to MPEP 803.02.
Applicant's elected species appears allowable over the prior art of record. Therefore, according to MPEP 803.02: should no prior art be found that anticipated or renders obvious the elected species, the search of the Markush-type claim will be extended. If prior art is found that anticipated or renders obvious the Markush-type claim with respect to a nonelected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration. The search of the Markush-type claim has been extended to the non-elected species wherein:
p is 1; R1 is –(C=O)R; and the remaining variables are as defined in the claims.
As prior art has been found which anticipates the above identified nonelected species, the Markush-type claims are rejected as follows and the subject matter of the claims drawn to nonelected species held withdrawn from consideration. Claims 1-9 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since art was found on the nonelected species, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
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 4-7 and 9 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.
Regarding claims 5 and 7, the phrase " “e.g., pyrazolyl” and “exemplary specific compounds,” respectively, render the claims indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d). This rejection can be overcome, for example, by deleting the word “exemplary” and the phrase “e.g., pyrazolyl” from the claims.
Regarding claims 4 and 9, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). This rejection can be overcome, for example, by deleting all the recitations of “such as” and the following examples listed in claim 9 and “such as F” in claim 4.
With regards to the claims 4-6 and 9, 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 4, for example, recites the broad recitation “R2’ is selected from H, Cl, and C6-10 aryl…” and the claim also recites “preferably, R2’ is selected from H, Cl, and the following structures…” 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. This rejection can be overcome by deleting all recitations of “preferably” and “more preferably” and all the following statements in the claims.
Regarding claim 6, line 11 of the claim, “-C(=O)OCH(CH3)3” is believed to be a typo since carbon can only form 4 bonds and should be replaced with “-C(=O)OC(CH3)3.”
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 1-3 and 8 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US PG-PUB 2010/0204230 A1.
US 2010/0204230 A1 discloses compounds of formula I (see claim 1) and pharmaceutical compositions thereof (see claim 9), such as compound Ex. 119 (see page 41), which anticipates a compound and a pharmaceutical composition thereof of the claims wherein the moiety
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; p is 1; R1 is –(C=O)R wherein R is C1-6 alkoxy; m is 0; R2’ is 3- to 14-membered heterocyclyl substituted with 1 R2a wherein R2a is C6-14 aryl substituted with R2b wherein R2b is unsubstituted C1-12 alkoxy; R6 is H; q is 0; R3 is unsubstituted C1-12 alkyl; R4 is H; and R7 is H.
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (Bioorganic & Medicinal Chemistry 23 (2015) 4591-4607).
Zhang et al. discloses 4-arylamino-6/7-substituted-5,6,7,8-tetrahydropyrido[4,3-d]pyrimidines (see abstract), such as the compound 12a (see Table 1 on page 4596) which anticipates a compound of the claims wherein the moiety
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; p is 1; R1 is –(C=O)R wherein R is C1-6 alkoxy; m is 0; R2’ is H; R6 is H; q is 0; R3 is halogen; R4 is halogen; and R7 is H.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622