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 .
Status of the Claims
Claims 1 – 101 are pending.
Claims 1 – 3, 5, 7, 10 – 12, 14 – 15, 28, 31 – 32, 50, 52 – 54, 56, 58, 60, 62, 65, 72, 81 – 82, 85, 91, 97 – 98 and 100 are rejected.
Claims 4, 6, 8 – 9, 13, 16 – 27, 29 – 30, 33 – 49, 51, 55, 57, 59, 61, 63 – 64, 66 – 71, 73 – 80, 83 – 84, 86 – 90, 92 – 96, 99 and 101 are withdrawn.
Election/Restriction
Applicant’s election without traverse of Group I, claims 1 – 100, in the reply filed on February 12, 2026 is acknowledged. Applicant specifically elected Compound 3. See, paragraph [0373], Table 1. However, according to the remarks filed on February 12, 2026, Applicant inadvertently stated an incorrect structure of Compound 3. Applicant stated the structure below:
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, which corresponds to Compound 9. Further, instant claims do not read on the structure of Compound 9.
The correct structure of Compound 3 is presented below:
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.
The compound reads on the structure of Formula (I-C) (claim 1):
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, wherein:
Y1 – Y2 are each hydrogen (H),
Both R1s and R2s are each H,
X1 – X4 are each -C,
A1 and A2 are each a bond,
R3 – R6 are each H, and
R7 is
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, wherein both R1 and R2 are each H, and
n is 1.
The compound reads on the structure of Formula (I-B) (claim 53):
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, wherein:
A1 and A2 are each a bond,
R1 and R2 are each H,
X is -CH,
R3 is absent, and
R4 – R5 are each H.
Examination: Applicant’s elected Compound 3 reads on claims 1 – 3, 5, 7, 10 – 12, 14 – 15, 28, 31 – 32, 50, 52 – 54, 56, 58, 60, 62, 65, 72, 81 – 82, 85, 91, 97 – 98 and 100. The elected species is allowable over the prior art. In accordance with MPEP §803.02, examination of the Markush-type claim has been extended to the scope, wherein R5 is heteroaromatic. Claims 4, 6, 8 – 9, 13, 16 – 27, 29 – 30, 33 – 49, 51, 55, 57, 59, 61, 63 – 64, 66 – 71, 73 – 80, 83 – 84, 86 – 90, 92 – 96, 99 and 101 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/ species, there being no allowable generic or linking claim.
Priority
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Information Disclosure Statement
The information disclosure statements (IDS) submitted on April 18, 2025, July 17, 2025 and February 17, 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement are being considered by the examiner.
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.
Claims 1 – 3, 5, 7, 10 – 12, 14 – 15, 28, 31 – 32, 50 and 100 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 1 recites the limitation “X1, X2, X3 or X4 are each independently -CH, -C, or -N”. Emphasis added. See, pp. 2, line 7. In order to achieve an octet stable state in the outermost shell (octet rule), a carbon atom requires a valency of 4. However, according to the compound of Formula (I-C):
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.
When X1, X2 or X4 are each independently “-CH”, each carbon atom has formed an additional bond to moieties “A1R4”, “A2R5 and “R3” respectively more than the required valency of 4. It is unclear if the carbon atom would possess a positive charge (1+) or if the double bonds (between the carbon atom of X1 and the adjacent carbon atom in the ring) are not present in this state. Therefore, said limitation does not properly define the metes and bounds of the invention and renders the claim indefinite. Dependent claims do not remedy the deficiencies of the independent claim 1 and are also considered indefinite.
In order to overcome the objection, Applicant may amend to delete the term “-CH” from the scope of X1, X2 and X4.
Claims 53 – 54, 56, 58, 60, 62, 65, 72, 81 – 82, 85 and 91 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 53 is directed to a compound of Formula (I-B):
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and recites the limitation “R4 and R5 are each independently a prodrug” (see, line 10 of the claim). The term “prodrug” is not defined by the claim and the specification does not provide a standard for ascertaining the requisite degree. According to Merriam-Webster, prodrug is defined as a “pharmacologically inactive substance that is converted in the body (as by enzymatic action) into a pharmacologically active drug”. See, Merriam-Webster, page 1. A person having ordinary skill in the art would not be reasonably apprised of the metes and bounds of said term. Thus, it is unclear and indefinite as to how the “prodrug” herein is encompassed thereby. Dependent claims do not remedy the deficiencies of the independent claim 53 and are also considered indefinite.
In order to overcome the rejection, Applicant may amend to delete the limitation “R4 and R5 are each independently a prodrug”.
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.
Claim 52 is rejected under 35 U.S.C. 112(d) 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 52 recites the compound:
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Claim 1 (upon which claim 52 is dependent upon) is directed to a compound of Formula (I-C):
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, wherein R7 is specifically selected from:
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The compound claimed in claim 52 does not specifically define the limitations of variable R7 as set forth in claim 1. Thus, claim 52 fails to include all the limitations of the claim upon which it depends.
In order to overcome the rejection, Applicant may cancel the claim, amend the claim to said compound and place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
(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, 5, 7, 10 – 12, 14, 28, 31 – 32, 50, 53 – 54, 56, 58, 60, 62, 65, 72, 81 – 82, 85, 91, 97 – 98 and 100 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Meng et al. WO97/43281 A1 (publ. November 20, 1997; effect. filed May 16, 1996).
Meng et al. teach a compound of general formula I:
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. See, e.g., pg. 3, 3rd paragraph.
Meng et al. specifically teach compound 14 (see, e.g., Table 1, pp. 15):
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The prior art anticipates the instant claims as presented below:
Claims 1 – 3, 5, 7, 10 – 12, 14, 28, 31 – 32, and 50, directed to a compound of Formula (I-C):
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, wherein:
Y1 – Y2 are each hydrogen (H),
Both R1s and R2s are each H,
X1 – X4 are each -C,
A1 and A2 are each a bond,
R3 – R4 and R6 are each H,
R5 is heteroaromatic (thienyl ring), and
R7 is
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, wherein both R1 and R2 are each H, and
n is 1.
Claims 53 – 54, 56, 58, 60, 62, 65, 81 – 82, 85, 91, 97 – 98, directed to a compound of Formula (I-B):
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, wherein:
A1 and A2 are each a bond,
R1 and R2 are each H,
X is -CH,
R3 is absent, and
R4 is H, and
R5 is heteroaromatic (thienyl ring)
With respect to claim 100, Meng et al. teach that (S)-2-pyrrolidinemethanol was mixed with a solution of 3-(2-mesyloxyethyl)-5-(2-thienyl)-1H-indole in THF in a capped pressure tube, stirred and heated. After cooling, the solvent was evaporated and the crude product was dissolved in ethyl acetate and diluted with hexane. The solution was poured onto a silica gel column and the product was eluted with ethyl acetate. Ethyl acetate is considered a pharmaceutical excipient (according to Official Notice). Thus, Meng teaches a pharmaceutical composition comprising said compound and a pharmaceutically acceptable excipient.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sagar Patel whose telephone number is (571)272-1317. The examiner can normally be reached Monday - Friday: 9am to 5pm EST.
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/Sagar Patel/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626