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 .
Detailed Action
Claims 1-26 are currently pending.
Election/Restriction
Applicant’s election without traverse of Group I (Claims 1-19, drawn to compounds of formula (I)) and the elected species compound 16:
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in the reply filed on 2/26/2026 is acknowledged.
Claims 6-8, 10-16, and 20-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Groups II-III or unelected species, there being no allowable generic or linking claim. Thus, Claims 1-5, 9, and 17-19 are being examined on the merits herein.
The requirement is deemed proper and is therefore made final.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. See Para 257. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Appropriate correction is required.
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.
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.
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 1-5, 9, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Frackenpohl (US20150173359).
Frackenpohl teaches the following compound as an anti-abiotic stress agent for plants on Page 54:
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or
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; G13 =
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. Both Claims 5 and 9 teach the same compound (Compound 17 on Page 46 of the specification).
Regarding Claim 17, Applicant teaches the IC50 of the Frackenpohl compound is 0.87 uM (Spec: Page 46, Table 2). "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. See MPEP 2112 (I)-(II).
Claims 1-2 and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gouliaev (WO9942456).
Gouliaev teaches AMPA receptor modulators including the following compound on Page 29 or in Claim 23 as 2-Phenyl-4-oxo-1,2,3,4-tetrahydroquinazoline:
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. The compound is described as a most preferred embodiment. Page 40 extensively details pharmaceutical compositions comprising the invention with carriers for oral use/oral dosage forms.
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.
Claims 1-5, 9, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Frackenpohl (US20150173359).
Frackenpohl teaches the following compound as an anti-abiotic stress agent for plants on Page 54:
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or
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; G-13 =
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. Both Claims 5 and 9 teach the same compound (Compound 17 on Page 46 of the specification).
Frackenpohl, while not teaching the elected species
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explicitly, teaches that the R7 of the above compound may instead be G-159
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(Para 66 and Page 18). Further, compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See MPEP 2144.09. Therefore, one of skill in the art seeking to form a compound to reduce abiotic stress in plants would find it obvious to form the isomer as elected before the filing of the instant application because Frackenpohl teaches variability in the structure and such a modification is known in the art to produce compounds of similar properties.
Regarding Claim 17, Applicant teaches the IC50 of the Frackenpohl compound is 0.87 uM (Spec: Page 46, Table 2). Further, Claim 16, the obvious isomer of the Frackenpohl compound has a comparable IC50 value. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. See MPEP 2112 (I)-(II).
Conclusion
No claim is allowable.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard G. Peckham whose telephone number is (703)756-4621. The examiner can normally be reached 8:30am - 4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached on (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD GRANT PECKHAM/Examiner, Art Unit 1627
/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627