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 .
Claim Status
Claims 1-15 are currently pending.
Applicant’s election of Group I, claims 1-5 and 8-11, in the reply filed on Mar. 30, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The Applicant argued that “the subject matter of all claims is sufficiently related that a thorough search for the subject matter of any one Group of claims would encompass a search for the subject matter of the remaining claims.” However, the Applicant did not say how or why the subject matter of all claims is sufficiently and thus did not distinctly and specifically point out the error in the requirement. Such a broad allegation that the requirement is in error does not comply with the requirement of 37 CFR 1.111.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claims 1-5 and 8-11 are currently active and subject to examination. Claims 6-7 and 12-15 are withdrawn.
Claim Objections
Claims 8-11 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. See MPEP § 608.01(n). Accordingly, the claims 8-11 have not been further treated on the merits.
Claim 8 is dependent upon claims 1 and 6, but a dependent claim can only refer back to claims 1 or 6 (alternative only). Claims 9-11 depend from claim 8 and are therefore also improper multiple dependent claims.
Claim Rejections – 35 USC § 112(d)
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.”
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
“Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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 2 fails to include all the limitations of claim 1 upon which it depends because it says “R3 and R4 form a C2-C4 ring” while claim 1 requires “R3 and R4 form a C3-C6 ring”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) 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.”
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fan et al. (US 10,450,274 B2).
Claim 1 is directed towards a compound of the following formula:
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Fan teaches compounds falling within the genus of claimed Formula I. For example:
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Fan, Specification, Table 1, col. 61-62;
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Id., col. 65-66.
Therefore, claim 1 is anticipated.
Claims 2-4 read on the compound(s) of Fan above and are therefore also anticipated.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “2-((6-Bromoquinolin-4-yl)thio)-N-(methylsulfonyl)propenamide” (PubChem, PubChem CID 146047973, first published June 2, 2020, p. 1-8) (hereinafter PubChem CID 146047973).
Claim 1 is directed towards a compound of the following formula:
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.
PubChem CID 146047973 teaches a compound falling within the genus of formula I:
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PubChem CID 146047973, p. 2.
Therefore, claim 1 is anticipated.
Claims 2-3 read on the compound of PubChem CID 146047973 and are therefore also anticipated.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “N-cyclopropylsulfonyl-2-(6-iodoquinolin-4-yl)sulfanyl-2-methylpropanamide” (PubChem, PubChem CID 129232357, first published Aug. 4, 2017, p. 1-8) (hereinafter PubChem CID 129232357).
Claim 1 is directed towards a compound of the following formula:
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.
PubChem CID 129232357teaches a compound falling within the genus of formula I:
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PubChem CID 129232357, p. 2.
Therefore, claim 1 is anticipated.
Claims 2-3 read on the compound of PubChem CID 129232357 and are therefore also anticipated.
Claim Rejections – 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.”
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. (US 10,450,274 B2), as applied to claims 1-4 above.
The rejection of claims 1-4 above as anticipated by Fan is incorporated herein by reference. As such, these claims were prima facie obvious at the time of filing.
Claim 5 is directed towards the compound of claim 1, wherein the compound is:
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.
This compound is highly similar to the compounds of Fan. It differs from compound 107 of Fan in that R3 and R4 are methyl instead of together forming cyclobutyl. One of ordinary skill in the art, however, would have a reasonable expectation of success to replace the cyclobutyl with methyl because Fan teaches that similar uric acid reabsorption inhibitors can have methyl as each of R3 and R4. For example, see compound 105 above.
Therefore, claim 5 was prima facie obvious at the time of filing.
Given the above teachings, the invention as a whole was prima facie obvious at the time of filing.
Conclusion
No claim is found to be allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATHER DAHLIN whose telephone number is (571)270-0436. The examiner can normally be reached 9-5.
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, Jeffrey Lundgren can be reached on (571) 272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HEATHER DAHLIN/Examiner, Art Unit 1629
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