DETAILED ACTION
Notice of 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 .
Election/Restrictions
Applicant’s election with traverse of Group I in the reply filed on 12/08/2025 is acknowledged. Applicant traverses on the grounds that “Group I and Group II relate to a single inventive concept” (namely “a compound of Formula (I)”) and, as such, “it would not be a serious search and/or examination burden for both Groups I and II to be examined” (Applicant Arguments, Page 13).
The argument is not found persuasive. A serious search and examination burden if restriction were not required can be shown to exist when one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
In the instant case, the separate Groups of Invention would require, at minimum, a different field of search necessitating different search queries.
The requirement is still deemed proper and is therefore made FINAL.
Claims 27-28 and 37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant’s election without further specifying traverse of a single species in the reply filed on 12/08/2025 is also acknowledged.
The elected species read upon claims 1-7 and 25-26. Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Expansion of Election of Species Requirement
As indicated above, Applicant’s elected species, having the following structure:
PNG
media_image1.png
270
420
media_image1.png
Greyscale
(Compound 47) reads upon claims 1-7 and 25-26.
The elected species has been searched and is deemed to be free of the prior art and non-obvious.
Accordingly, the search has been expanded as called for under current Office Markush practice – a compound-by-compound search – to include a single additional species (M.P.E.P. § 803.02). That species is
PNG
media_image2.png
340
276
media_image2.png
Greyscale
wherein, in Formula (I),
PNG
media_image3.png
22
38
media_image3.png
Greyscale
is a double bond; X is N (and, therefore, R5 is absent); A is aryl (i.e., phenyl); R1, R2 and R4 are each independently hydrogen; R3 is a 6 membered heterocycle (i.e., piperazine); and R6 is hydrogen – which reads on claims 1-2, 3 (which further defines R5 but does not require R5) and 4-7. A rejection to those claims follows.
Since the search has not been expanded beyond the single additional species identified above, claims 25-26, which are directed to the elected species but which do not include the single additional species, are objected to as indicated below, and have not been further examined.
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.
Claim 1 is 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 is drawn to a compound of Formula (I) wherein “A is a five to ten membered ring e.g., chosen from aryl, heteroaryl, or fused heteroaryl”
The phrase “for example” 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).
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Budke et al (ChemMedChem 14:1031-1040, 2019).
Claim 1 is drawn to a compound of Formula (I) which embraces the following compound species:
PNG
media_image2.png
340
276
media_image2.png
Greyscale
wherein
PNG
media_image3.png
22
38
media_image3.png
Greyscale
is a double bond; X is N (and, therefore, R5 is absent); A is aryl (i.e., phenyl); R1, R2 and R4 are each independently hydrogen; R3 is a 6 membered heterocycle (i.e., piperazine); and R6 is hydrogen – which reads on claims 1-2, 3 (which further defines R5 but does not require R5) and 4-7.
Budke et al teach the instantly claimed compound (Page 1033, Column 1, Compound 8i; see also Page 1034, Table 1, Compound 8i).
Accordingly, claims 1-7 are anticipated.
Claim Objections
Claims 2-3, 5 and 25 are objected to for not ending with a period.
Claims 25-26, which are directed to the elected species but which do not include the single additional species, are objected to as containing non-elected subject matter, and have not been further examined.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRAIG D RICCI whose telephone number is (571) 270-5864. The examiner can normally be reached on Monday through Thursday, and every other Friday, 7:30 am - 5:00 pm ET. 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, Bethany Barham can be reached on (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CRAIG D RICCI/Primary Examiner, Art Unit 1611