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
Status of the Claims
Claims 1-2, 6-8, 10, 13, 25, 27-28, 33-36, 48, 60-61, 63-64 and 69-70 are pending. Claims 1-2, 6-8, 10, 13, 25, 27, 35-36, 48, 60-61, 63-64 and 69-70 are withdrawn. Claims 28 and 33 are rejected. Claim 34 is objected to.
Election/Restrictions
Applicant's election of Group I (claims 1-2, 6-8, 10, 13, 25, 27-28 and 33-35) and of the elected species
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without traverse in the reply filed on 06/16/2026 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)).
Claims 28 and 33-34 read on Applicant’s species election of
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. Examination of the elected invention was conducted in accordance with the MPEP 803.02.
The elected species is allowable in view of the prior art; therefore, examination of the Markush-type claim has been extended to the scope of formula (III) wherein:
A is a pyridine group; RA, R2, R3, R4, R5 and R6 are each H; X1 is -O-X4 wherein X4 is a bond; and X2 is CH; and
A is a phenyl group; RA, R2, and R4, are each methyl; R3 is H; R5 is CN; R6 is phenyl; X1 is -N(R8)-X4 wherein X4 is a bond and R8 is H; and X2 is CH.
Incidental to the search of the elected species additional prior art was discovered that is related to additional non-elected species of formula (III). In the interest of compact prosecution, a rejection over non-elected species is presented below.
Since art was found on a nonelected species, subject matter not embraced by the above-identified non-elected species is therefore withdrawn from further consideration. Claims 1-2, 6-8, 10, 13, 25, 27, 35-36, 48, 60-61, 63-64 and 69-70 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Priority
This application is a 35 U.S.C. 371 National Stage Filing of International Application No. PCT/US2022/017971 filed 02/25/2022, which claims priority under 35 U.S.C. 119(a-d) to PRO 63/154,306 filed 02/26/2021. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statements (IDS) dated 08/25/2023 and 08/26/2025 have been considered.
Claim Rejections - 35 USC § 112(b)
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 28 and 33 are rejected under 35 U.S.C. 112(b) 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.
Regarding claim 28, the phrase "e.g." renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Applicant may overcome the rejection by, for instance, deleting “(e.g., CH2)” in the claim.
Additionally, claim 28 recites the limitation wherein X2 is CR1, however R1 is not defined in the claim. For the purposes of applying prior art, the definition of R1 as outlined in withdrawn claim 1 was assumed for claim 28.
Dependent claim 33 is rejected as indefinite for the same reason since it does not correct the indefiniteness issue of its parent claim.
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.
(1 of 2) Claims 28 and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 53258-97-2, which entered STN November 16, 1984.
CAS Registry No. 53258-97-2 discloses the compound
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, which is embraced by instant formula (III) of claim 28 wherein A is a pyridine group; RA, R2, R3, R4, R5 and R6 are each H; X1 is -O-X4 wherein X4 is a bond; and X2 is CH. See also instant claim 33 wherein A is
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.
Thus, the claims are anticipated by the prior art.
(2 of 2) Claim 28 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dissanayake et al. in “Titanium-Catalyzed, One-Pot Synthesis of 2-Amino-3-cyano-pyridines” Advanced Synthesis & Catalysis, 2014, 356, 1811-1822.
Dissanayake teaches compound 1c,
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(see Figure 2, page 1812), which is embraced by instant formula (III) of claim 28 wherein A is a phenyl group; RA, R2, and R4, are each methyl; R3 is H; R5 is CN; R6 is phenyl; X1 is -N(R8)-X4 wherein X4 is a bond and R8 is H; and X2 is CH.
Applicant is advised that additional compounds in the reference are embraced by formula (III) of the instant claim noted above, including Examples 1a, 1d, 1e, 1g, 1h and 1i. See Figure 2, page 1812. See also Products in Table 1 page 1813, specifically examples 1l, 1n, 1p, 1q, 1t and 1u.
Thus, the claim is anticipated by the prior art.
Allowable Subject Matter
Claim 34 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The compounds of claim 34 are novel and nonobvious. One close prior art reference is from Dissanayake et al. in “Titanium-Catalyzed, One-Pot Synthesis of 2-Amino-3-cyano-pyridines” Advanced Synthesis & Catalysis, 2014, 356, 1811-1822. Dissanayake teaches close structural analog 1c,
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(see Figure 2, page 1812), which is nearly identical to the following compound of the instant claim
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(see top left of page 7), except wherein the indicated methyl is a hydrogen in the instant claim. While the two compounds are considered close structural homologs, the prior art does not disclose any motivation for modifying compound 1c in such a way as to land on the compound of the present claim. On the contrary, the syntheses outlined by Dissanayake et al. seem to have improved yields only when the methyl in question is conserved. Compare for instance compound 1a,
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, with compound 1q,
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, which are synthesized in yields of 72% and 62 %, respectively. See Figure 2 on page 1812 and Table 1 on page 1813. Importantly, there is no motivation in the prior art to use the compounds in the way intended by the instant application.
Thus, the claim is novel and nonobvious.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jalisa H. Ferguson whose telephone number is (703)756-1489. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L. Clark can be reached on (571) 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.H.F./Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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