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 .
Election/Restrictions
Applicant’s election without traverse of Serodolin in the reply filed on May 29, 2026 is acknowledged.
The elected species was found. Claims 2-23 are withdrawn from consideration because art was found (see MPEP 803.02.). It should be noted that intended use of a compound does not carry patentability weight.
Applicants are advised of MPEP 803.02 Restriction - Markush Claims [R - 2], fourth and fifth paragraph, where is stated:
“As an example, in the case of an application with a Markush - type claim drawn to the compound C - R, wherein R is a radical selected from the group consisting of A, B, C, D, and E, the examiner may require a provisional election of a single species, CA, CB, CC, CD, or CE. The Markush - type claim would then be examined fully with respect to the elected species and any species considered to be clearly unpatentable over the elected species. If on examination the elected species is found to be anticipated or rendered obvious by prior art, the Markush - type claim and claims to the elected species shall be rejected, and claims to the non - elected species would be held withdrawn from further consideration. As in the prevailing practice, a second action on the rejected claims would be made final.” (emphasis added).
On the other hand, should no prior art be found that anticipates or renders obvious the elected species, the search of the Markush-type claim will be extended. If prior art is found that anticipates or renders obvious the Markush-type claim with respect to a non-elected species, the Markush-type claim shall be rejected and claims to the nonelected species held withdrawn from further consideration. The prior art search, however, will not be extended unnecessarily to cover all nonelected species. Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection, as by amending the Markush-type claim to exclude the species anticipated or rendered obvious by the prior art, the amended Markush-type claim will be reexamined. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during the reexamination that anticipates or renders obvious the amended Markush-type claim, the claim will be rejected and the action made final. Amendments submitted after the final rejection further restricting the scope of the claim may be denied entry.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
i) The phrase “optionally substituted with one pr several substituents, said substituents being in particular” is improper language. The phrase “optionally substituted by one or more substituents” is suggested.
ii) The term “heteroaryl” is indefinite because it is not known how many atoms are present, how many and what kind of heteroatoms are involved, what size ring is intended and how many rings are present.
iii) Regarding the substituents on the aryl, the phrase "such as" 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). See halo(C1-C6)alkyl group, such as CF3. See also definition of A2. Similarly, the phrase “for example” in the definition at A-1 renders the claim indefinite.
iv) The nature of the hetero atom in hetroalkyl is not known. Appropriate clarification is required.
v) The term “heterocycloalkyl” is indefinite because it is not known how many atoms make up the ring, which atoms are present and what kind of a ring (monocyclic, bicyclic, spiro, fused, bridged, saturated, etc.) is intended. Similarly, the groups “monocyclic groups, bicyclic groups, fused bicycles and spiro-type rings” need to specify which atoms are present, how many are present and what degree of saturation is intended.
vi) The phrase second from last at claim 1 reads “or its pharmaceutically acceptable salts, racemates, diastereomers or enantiomers” should be rewritten using proper Markush language of claiming in singular form. Thus, the phrase “or a pharmaceutically acceptable salt, racemate, diastereomer or enantiomer” is suggested.
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 1 is rejected under 35 U.S.C. 102(a)() as being anticipated by Deau et al. (Journal of Medicinal Chemistry (2015), 58(20), 8066-8096). The claim reads on the compounds depicted below (see Table 1, page 8072).
RN 1814929-77-5 CAPLUS
CN 2H-Benzimidazol-2-one, 1-[5-[4-(4-bromophenyl)-1-piperazinyl]pentyl]-
1,3-dihydro- (CA INDEX NAME)
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254
555
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RN 1814929-79-7 CAPLUS
CN 2H-Benzimidazol-2-one, 1,3-dihydro-1-[5-[4-(4-iodophenyl)-1-
piperazinyl]pentyl]- (CA INDEX NAME)
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254
548
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RN 1814929-81-1 CAPLUS
CN 2H-Benzimidazol-2-one, 1-[5-[4-(4-fluorophenyl)-1-piperazinyl]pentyl]-
1,3-dihydro- (CA INDEX NAME)
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254
550
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCK KIFLE whose telephone number is (571)272-0668. The examiner can normally be reached 8 AM - 6 PM, M-F.
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 H. Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
July 17, 2026
/BRUCK KIFLE/Primary Examiner, Art Unit 1624
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