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 . Claims 1, 3-4, 8, 16, 18, 22, 25-26, 28, 32, 35-36, 38, 40-43 and 47 are pending in this application.
Election/Restrictions
Applicant’s election without traverse of Group I and a single disclosed species of compound C1a in the reply filed on 05/08/2026 is acknowledged.
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The examiner searched the elected species and it is free of prior art. The search was expanded and stopped when a prior art was found.
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, 3, 16, 18 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Basak et al. WO-2008/008374 A2. Cited reference disclose at page 254 the following antidiabetic compounds that are the same as applicants (i.e. R3 = H; X1 = methyl or chloro; W = -SO2-NH; R1 = -CONR4R5 wherein R4 and R5 together with the nitrogen atom to which they are attached form a heterocyclic ring; R2 = H; and Y1 = chloro.
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Since said compounds are the same as applicants, a 102(a)(1) rejection is proper.
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.
Claims 1, 3-4, 16, 18, 22, 25-26, 28, 32, 36, 38, 40-43 and 47 are 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:
a. Claim 1 and claims dependent thereon are rejected because the phrase “ form a ring” is indefinite. What is covered and what is not? What is the nature of the ring? Monocyclic? Polycyclic? Spirocyclic? What is the size of the ring formed? What is the nature of the ring atoms in the ring?
b. Claim 16 is rejected because the claims fails to narrow down the claim limitation of claim 1. In claim 16, the phrase “wherein said compound is selective prostaglandin receptor antagonist” does not narrow down the claim limitation of the compound of claim 1. What compounds are selective prostaglandin receptor antagonists and what are not?
c. In claim 18, the phrase “the diabetes is characterized by EP3 overexpression beta cells” and in claim 22 the phrase “administration is performed so as to prevent or inhibit loss of pancreatic beta cells…” lacks sufficient antecedent basis. Claims 18 and 22 depend from claim 1, but there is no mention of said phrases back in claim 1. Claims 18 and 22 appears to be duplicate of claim 1.
Specification
The disclosure is objected to because of the following informalities: The chemical structures of Compounds 1a and Compound 1b at page 20 of the specification are fuzzy. The compounds should be drawn as it was done in Compound 1c.
Appropriate correction is required.
Claim Objections
Claims 8 and 35 are objected to because of the following informalities: The chemical structures of Compounds 1a and Compound 1b are fuzzy and drawn differently from Compound 1c. It is recommended that applicants fix the chemical structures of Compound 1a and Compound 1b.
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Note that Compound 1c in said claims is drawn properly (see below).
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It is also recommended that applicants fix the same faded chemical structures in the specification. Appropriate correction is required.
Information Disclosure Statement
9. Applicant’s Information Disclosure Statement, filed on 02/23/20024 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
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 MURRAY can be reached on 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 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 https://ppair-my.uspto.gov/pair/PrivatePair. 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.
/Kahsay Habte/
Primary Examiner, Art Unit 1624
May 19, 2026
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