DETAILED ACTION
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 .
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.
Election/Restrictions
Applicant’s election without traverse in the reply filed on 26 February 2026, is acknowledged.
Applicants’ provided a compliant species election to:
PNG
media_image1.png
326
318
media_image1.png
Greyscale
(CAS RN: 2858646-52-1), which is a species of genus formula I of instant claim 1, wherein: “A” is a 5-membered heterocyclyl of formula:
PNG
media_image2.png
124
196
media_image2.png
Greyscale
; L1 is a covalent bond; L2 is (CR7R7)p; L3 is O; Q is a 6-membered heteroaryl group substituted with (R3)n and one R4; X1 is N; X2 is N; X3 is NR6 wherein dashed circle denotes bonds forming a 5-membered aromatic ring; Y1 is CR5 wherein R5 is methyl; Y2 is N; Y3 and Y4 are each independently CR5 wherein R5 at each occurrence is independently hydrogen (H); R2 at each occurrence is H; R4 is C4cycloalkyl; R6 is methyl; R7 at each occurrence is H; m is 0; n is 0; and p is 1.
The elected species is free of the prior art.
The Examiner extended the Markush search to any compounds wherein ring A is A1, but did not retrieve prior art. See “SEARCH 6” in enclosed search notes.
The Examiner extended the Markush search to the full scope of instant claims 1 and 69 but did not retrieve any prior art.
Therefore, the Election of Species Requirement of 7 January 2026, is withdrawn, as all claims are free of the prior art.
All claims have been examined on the merits.
Current Status of 18/557,918
This Office Action is responsive to the amended claims of 26 February 2026.
Claims 1-2, 9, 13, 15, 18, 21-22, 25-26, 29, 32, 35-36, 39, 42, 45-46, 49-50, 54, 57, 60-61, 64-65, and 68-74 have been examined on the merits. Claims 2, 60, 68, and 70-71 are original. Claims 1, 50, 64, 69, and 74 are currently amended. Claims 9, 13, 15, 18, 21-22, 25-26, 29 32, 35-36, 39, 42, 45-46, 49, 54, 57, 61, 65, and 72-73 are previously presented.
Priority
The effective filing date is 30 April 2021.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 27 October 2023, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The title of the invention contains “Novel”. The title of the invention is not descriptive. The words “New”, “Novel”, “Improvement” are not permitted in the title. See MPEP 606 for a list of all prohibited words. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: -- [[NOVEL]] TRIAZOLE-PYRIDINE SUBSTITUTED PYRROLIDINYL AND TETRAHYDRO-2H-PYRANYL ACETIC ACID COMPOUNDS AS LPA ANTAGONISTS -- .
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 74 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.
The claim 74 contains both: 1) “e.g.” and 2) limitations within parentheticals. The abbreviation “e.g.” which is interpreted as “for example” renders the metes and bounds of claim 74 undefined (hence rendering claim 74 indefinite under 35 USC 112(b)): the artisan does not know if the limitations following “e.g.” are merely exemplary or are required limitations of the claim. Please delete “e.g.” to render moot this portion of the rejection.
Separately, the limitations within parentheticals render the metes and bounds of claim 74 undefined (hence rendering claim 74 indefinite under 35 USC 112(b)): the artisan does not know if the limitations within the parentheticals are merely exemplary or are required limitations of the claim.
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 9 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.
Dependent claim 9, drawn to “L1 being one of covalent bond, NH, O, or S” does not further limit the identically same choices presented in parent claim 1. Therefore, claim 9 is rejected under 35 USC 112(d).
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.
Conclusion
Claims 9 and 74 are not presently allowable as written.
Claims 1-2, 13, 15, 18, 21-22, 25-26, 29, 32, 35-36, 39, 42, 45-46, 49-50, 54, 57, 60-61, 64-65, and 68-73 are presently allowable as written.
The elected species is free of the prior art. This search (see enclosed search notes) is governed by the disclaimer for variable L1 according to instant claim 1.
A search for the genus form encompassing the elected species:
PNG
media_image3.png
450
338
media_image3.png
Greyscale
, wherein Ring A is A1, and wherein R1 is Nitrogen (N) or carbon (C); and R2 is N, O, S, or C, did not retrieve any prior art. See “SEARCH 6” in enclosed search notes. This search (see enclosed search notes) is governed by the disclaimer for variable L1 according to instant claim 1.
A search for the genus form encompassing the Markush search extension wherein Ring A is A2:
PNG
media_image4.png
464
234
media_image4.png
Greyscale
, and wherein R1 is Nitrogen (N) or carbon (C); and R2 is N, O, S, or C, did not retrieve any prior art. See “SEARCH 7” in enclosed search notes. This search (see enclosed search notes) is governed by the disclaimer for variable L1 according to instant claim 1.
A search for the genus formula IV of instant claim 69 did not retrieve any prior art. See “SEARCH 8” in enclosed search notes.
A search for the genus formula I of instant claim 1 wherein ring A is A3 did not retrieve any prior art. See “SEARCH 9” in enclosed search notes. This search (see enclosed search notes) is governed by the disclaimer for variable L1 according to instant claim 1.
A search for the genus formula I of instant claim 1 wherein ring A is A4 did not retrieve any prior art. See “SEARCH 10” in enclosed search notes. This search (see enclosed search notes) is governed by the disclaimer for variable L1 according to instant claim 1.
A search for the genus formula I of instant claim 1 wherein ring A is A5 did not retrieve any prior art. See “SEARCH 11” in enclosed search notes. This search (see enclosed search notes) is governed by the disclaimer for variable L1 according to instant claim 1.
A search for the genus formula I of instant claim 1 wherein ring A is A6 did not retrieve any prior art. See “SEARCH 12” in enclosed search notes. This search (see enclosed search notes) is governed by the disclaimer for variable L1 according to instant claim 1.
A search for the genus formula I of instant claim 1 wherein ring A is A7 did not retrieve any prior art. See “SEARCH 13” in enclosed search notes. This search (see enclosed search notes) is governed by the disclaimer for variable L1 according to instant claim 1.
The reference CHENG (WO 2020/060915 A1, provided by Applicants and referenced in IDS of 27 October 2023) discloses compound 11:
PNG
media_image5.png
264
352
media_image5.png
Greyscale
(on page 137). However, it is structurally distinct from the instant claim 1 at least in two ways: (1) it does not follow the disclaimer for Y1-Y4 requiring that “at least one but no more than two of Y1, Y2, Y3, and Y4 are N”; and (2) it does not conform to the disclaimers of variable L1 and (3) does not have a ring “A” structurally the same as any of A1-A7.
These constitute two or more structural differences too many to make a viable obviousness rejection without running afoul of hindsight reasoning.
Furthermore, the reference WO 2019/126084, which is referenced in IDS of 27 October 2023, discloses the compound:
PNG
media_image6.png
252
578
media_image6.png
Greyscale
(page 91). However, it is structurally distinct from the instant claim 1 as it does not follow the disclaimer for Y1-Y4 requiring that “at least one but no more than two of Y1, Y2, Y3, and Y4 are N”. It would not be obvious to randomly place a nitrogen on one or two of the positions Y1-Y4 to attempt to arrive at the instant invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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, Andrew D Kosar can be reached at (571) 272-0913. 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.
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
Prosecution Insights