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 1-12, 19, 27, 34-37, 39 and 41 are currently pending in the instant application. Applicants have amended claims 3-11, 34-37, 39 and 41 and canceled claims 12-18, 20-26, 28-33, 38, 40 and 42 in an amendment filed on November 3, 2023. Claims 1-6, 8-10, 12, 19, 27, 34, 36 and 37 are rejected and claims 7, 11, 35, 39 and 41 are objected in this Office Action
I. Priority
The instant application is a 371 of PCT/US2022/027690, filed on May 4, 2022 which claims benefit of US Provisional Applications 63/183,642, filed on May 4, 2021 and 63/292,844, filed on December 22, 2021.
II. Information Disclosure Statement
The information disclosure statements (IDS) submitted on February 9, 2025 and November 3, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
III. Rejections
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 1-6, 8, 9, 10 and 36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem SID 105686805 (2019, modified May 31, 2019). The instant invention claims
PNG
media_image1.png
780
709
media_image1.png
Greyscale
PNG
media_image2.png
42
622
media_image2.png
Greyscale
The PubChem SID 105686805 reference teaches piperazine derivatives such as
PNG
media_image3.png
346
313
media_image3.png
Greyscale
(See page 2) wherein Ar1 and Ar2 are both phenyl substituted with F; X is
PNG
media_image4.png
48
99
media_image4.png
Greyscale
; Y is -CO- and R is pyridine substituted with Cl. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claims 1-6, 8, 9, 10, 19 and 36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tuo, et al. (J. Med. Chem. 2017, 60, 4-46). The instant invention claims
PNG
media_image1.png
780
709
media_image1.png
Greyscale
PNG
media_image2.png
42
622
media_image2.png
Greyscale
The Tuo, et al. reference teaches piperazine derivatives such as
PNG
media_image5.png
164
164
media_image5.png
Greyscale
(See compound 144, page 33) wherein Ar1 and Ar2 are both phenyl substituted with F; X is
PNG
media_image4.png
48
99
media_image4.png
Greyscale
; Y is -CO- and R is triazole. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki (JP 33007269 (abstract), Accession No. 1960:11518, ZCAPLUS). The instant invention claims
PNG
media_image6.png
542
788
media_image6.png
Greyscale
PNG
media_image7.png
68
713
media_image7.png
Greyscale
The Suzuki reference teaches piperidine derivatives such as
PNG
media_image8.png
227
371
media_image8.png
Greyscale
(See RN 114399-88-1) wherein Ar1 and Ar2 are both phenyl; Y is -CH2- and R is phenyl. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wheeler, et al. (US 2898339 (abstract), Accession No. 1960:2347, ZCAPLUS). The instant invention claims
PNG
media_image6.png
542
788
media_image6.png
Greyscale
PNG
media_image7.png
68
713
media_image7.png
Greyscale
The Wheeler, et al. reference teaches piperidine derivatives such as
PNG
media_image9.png
234
346
media_image9.png
Greyscale
(See RN 113649-78-8) wherein Ar1 and Ar2 are both phenyl; Y is -CO- and R is pyridine. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim 19 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by van der Stelt (BE 616905 (abstract), Accession No. 1963:20790, ZCAPLUS). The instant invention claims
PNG
media_image10.png
793
784
media_image10.png
Greyscale
PNG
media_image11.png
701
779
media_image11.png
Greyscale
PNG
media_image7.png
68
713
media_image7.png
Greyscale
The van der Stelt reference teaches piperazine derivatives such as
PNG
media_image12.png
224
368
media_image12.png
Greyscale
(See RN 1249-94-1) wherein the compound has the formula
PNG
media_image13.png
159
156
media_image13.png
Greyscale
and X is
PNG
media_image14.png
50
102
media_image14.png
Greyscale
; R1-R4 are hydrogen; Y is -CH2- and R is phenyl. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim 27 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morren (BE 501277 (abstract), Accession No. 1955:12384, ZCAPLUS). The instant invention claims
PNG
media_image15.png
160
547
media_image15.png
Greyscale
PNG
media_image16.png
550
767
media_image16.png
Greyscale
The Morren reference teaches piperidine derivatives such as
PNG
media_image17.png
215
373
media_image17.png
Greyscale
(See RN 1129281-18-0) wherein Ar1 and Ar2 are both phenyl; X is
PNG
media_image18.png
46
89
media_image18.png
Greyscale
; Y is -CH2- and R is phenyl substituted with methyl. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim 27 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pelcman, et al. (WO 9828270 (abstract), Accession No. 1998:479507, ZCAPLUS). The instant invention claims
PNG
media_image15.png
160
547
media_image15.png
Greyscale
PNG
media_image16.png
550
767
media_image16.png
Greyscale
The Pelcman reference teaches piperidine derivatives such as
PNG
media_image19.png
327
448
media_image19.png
Greyscale
(See RN 209902-08-9) wherein Ar1 is phenyl substituted with a dialkylaminocarbonyl and Ar2 is naphthyl; X is
PNG
media_image18.png
46
89
media_image18.png
Greyscale
; Y is -CH2- and R is phenyl. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 9 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. Regarding claim 9, the phrase "e.g., a 5-7 membered ring" 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). Applicants are suggested to amend claim 9 by deleting the phrase "e.g., a 5-7 membered ring" to overcome the rejection.
Claim 9 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. Claim 9 recites the limitation “wherein R is a 5-10 membered ring” which is dependent on claim 1. However, claim 1 can only be an “aryl, heteroaryl, cycloalkyl or cycloheteroalkyl” and does not use the language “a ring”. There is insufficient antecedent basis for this limitation in the claim. Applicants are suggested to amend claim 9 to incorporate the language used in claim 1 so that it is consistent and has sufficient antecedent basis to overcome the rejection.
Claim 34 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. Specifically, the limitation in claim 34 which is drawn to “wherein the compound is described in Table 1” do not clearly define the structure or name of each compound. The examiner must refer to the specification to find the structures of the various compounds being referred in claim 34. A claim referring to the specification is improper except in rare instances and fails to particularly point out the subject matter that applicant regards as the invention. Ex parte Fressola, 27 USPQ 2d 1608 (1993). To overcome the rejection, Applicants need to insert the structures of each compound disclosed in claim 34 which are found in Table 1 of the specification.
Claim 37 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. Claim 37 contains the limitation “derivative”. However, Applicants have failed to define the term “derivative” so that one of ordinary skill in the art would know what structures are included and/or excluded by the term. Therefore, the claim is considered indefinite. Applicants are suggested to amend claim 37 by deleting the term “derivative” to overcome the rejection.
IV. Objections
Dependent Claim Objections
Dependent Claims 7, 11, 35, 39 and 41 are also objected to as being dependent upon a rejected based claim. To overcome this objection, Applicant should rewrite said claims in an independent form and include the limitations of the base claim and any intervening claim.
Claim Objection
Claim 1 is objected to because of the following informalities: containing 2 periods. The first period after the word “below” should be deleted. Each claim begins with a capital letter and ends with a period (MPEP 608.01 (m)). Appropriate correction is required.
Claim 19 is objected to because of the following informalities: the phrase “A compound defined by any of Formula” should read “A compound defined by any one of Formula”. Appropriate correction is required.
Claim 35 is objected to because of the following informalities: the phrase “wherein the compound is…” should read “wherein the compound is selected from a group consisting of” and then insert the term “and” in between the last two structures of the claim. Appropriate correction is required.
V. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Adam Milligan can be reached on 571-270-7674. 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 http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626