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 .
Priority
U.S. Pat. Appln. Ser. No.: 18/569,352, Filed: December 12, 2023 is a 371 Nat.’l Stage Entry of PCT/US2022/034622, Intern.’l Filing Date: June 23,2022, Intern.’l Pub. Date: January 5, 2023), which claims priority from U.S. Prov. Appln. 63/215535, Filed: June 28, 2021.
Status
The present office action is in response to the December 12, 2023 Preliminary Amendment, July 17, 2025 Information Disclosure Statement (i.e., to be reviewed at first office action on merits) and other corresponding documents.
Claims 1-17 and 19-20 are pending, claims 1-16 and 19-20 are under examination, claims 1-2, 10 and 13-16 are currently amended, claims 3-9, 11-12 and 19- 20 are previously presented, claim 17 is withdrawn for being directed to non-elected subject matter (i.e., Group II) and claim 18 is cancelled in the above-identified application.
Information Disclosure Statement
Three (3) Information Disclosure Statements (IDS) submitted on June 3, 2026, July 17, 2025 and January 8, 2024, respectively are in compliance with the provisions of 37 CFR 1.97.
Accordingly, Information Disclosure Statements have been considered by the Examiner.
Election/Restrictions
[a] Applicants’ election without traverse of the following is acknowledged.
[1] Group I: Claims 1-16 and 19-20
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; and
[2] Election of Species
Example 3:
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3-((5-(2,6-difluorophenyl)-1,3,4-oxadiazol-2-yl)methyl)quinolin-2(1H)-one
E = CR3 ;U= CR4 ; X = CR5 ; Y = CR6; Z = CR7
R2 = oxo
R1 = R3 = R4 = R5 = R6 =R7 = H
n = 1
A = heteroaryl sub.w/aryl sub w/two halogen
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Claims 1-8,12 and 19-20 read on the elected species.
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 1-8, 12, 15-16 and 10-20 are under examination and claims 9-11 and 13-14 (i.e., A ≠
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) and 17 (i.e., non-elected method) are withdrawn for being directed to non-elected subject matter pursuant to 37 CFR 1.142(b), as being directed to non-elected subject invention of Group II, there being no allowable generic or linking claim.
Therefore this restriction is considered proper and thus made FINAL.
[B] Expanded Prior Art Search: New Prior Art
A comprehensive search of the patent and non-patent literature was conducted for the elected species Example 3: 3-((5-(2,6-difluorophenyl)-1,3,4-oxadiazol-2-yl)methyl)quinolin-2(1H)-one
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The elected species was searched, not found in the prior art,
The search was extended to cover the full scope of the claims, including full scope of claim 16.
In accordance with M.P.E.P. § 803.02 Markush Claims):
the provisional election of species requirement is hereby withdrawn;
Clams 1-16 and 19-20 are under examination.
As a result, prior art was found as identified by cited art below, where:
A = aryl = phenyl;
i.e., where A is further substituted with substituents (i.e., see claims 1-2)
E is N, CR3
Z= N and substituents for variables U, X and Y
Claim Rejections - 35 USC § 102
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.
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] Claim(s) 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Pathak et al., Tetrahedron, Vol. 63, No. 2, January 8, 2007 (Available Online: 9 November 2006), pp. 451-460
Pathak discloses 3-aryl-methyl-1H-quinoline-2-one encompassed by a compound of Formula (I) of claimed invention (i.e., reads on claims 1-9 and 10; see compd. 5 of Table 1 at page 452 shown below)
Pathak
Correlation With
Claimed Invention
[AltContent: textbox (II)][AltContent: textbox (I)]
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Equivalent Functional Groups
[AltContent: textbox (I)][AltContent: textbox ()][AltContent: textbox (II)]
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Quinolone Ring (I)
R1 = H
E = CR3 ; R3 = H
R2 = oxo; R1 =H
R = C6H5
A = aryl sub with H (equivalent to R) ; n = 1
Phenyl of Quinolone Ring (II)
U = (CR4); X (CR5);Y (CR6); Z (CR7);
i.e., where: R4 = R5 =R6 =R7 = R1 =H
Therefore, Pathak anticipates the claimed invention.
[2] Claim(s) 1-9 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
WO 2007/014885 A1 to Janssen, Intern.’l Pub. Date: 8 Feb 2007
(Instant Appln. EFD June 28, 2021)
WO ‘885 Appln. discloses 3-aryl-methyl-1H-quinoline-2-one encompassed by a compound of Formula (I) of claimed invention exemplified by excerpted compounds of Table below (i.e., reads on claims 1-9; see page 40 and intermediate compounds 23-25shown below)
WO ‘885
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E = CR3 ; R3 = H
R2 = oxo; R1 =H;
A = aryl sub with H (equivalent to R); n = 1
U = (CR4); Y (CR6); Z (CR7);
i.e., where: R4 =R6 =R7 = R1 =H
X = CR5; R5 =halogen = Br
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E = CR3 ; R3 = H
R2 = oxo;
R1 = C1-C6alkyl = CH3
A = aryl sub with H (equivalent to R); n = 1
U = (CR4); Y (CR6); Z (CR7);
i.e., where: R4 =R6 =R7 = R1 =H
X = CR5; R5 =halogen = Br
WO 2007/014885 also teaches “ . . .an effective amount of the particular compound, optionally in addition salt form, as the active ingredient is combined in intimate admixture with a pharmaceutically acceptable carrier, which carrier may take a wide variety of forms depending on the form of preparation desired for administration. ” (i.e., which reads on claims 19-20; see generally therein, Abstract, lines 11-13 and page 20, lines 22-37 to page 21, lines 1-11)
Therefore, WO 2007/014885 anticipates the claimed invention.
[3] Claim(s) 1-2 and 4-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gagnot et al. “On Pyridopyrazinol Chemistry: Synthesis of Chemiluminescent Substances”, Synthesis, Vol. 53, No. 14, 1 July, 2021, Online Availability February 22, 2021, pp. 2477-2494. (Instant Appln. EFD June 28, 2021)
Gagnot discloses 3-aryl-methyl-1H-quinoline-2-one encompassed by a compound of Formula (I) of claimed invention exemplified by excerpted compounds 17, 20, 22 and 23 (i.e., reads on claims 1-9 (i.e., see compounds 17, 20 at page 2478 and intermediate compounds 22-23 at page 2479 shown below)
Gagnot
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3-Benzylpyrido[3,4-b]pyrazin-2-ol (17)
E = N
R2 = oxo;
R1 = H
A = aryl sub H = -CH2-C6H5
n = 1
U = CR4; X = CR5; Z= CR7;
i.e., where: R4 =R5 =R7 =H
Y = N
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2-Benzylpyrido[3,4-b]pyrazin-3-ol (20)
E = N
R2 = oxo;
R1 = H
A = aryl sub with H (equivalent to R)
n = 1
U = CR4; Y=CR6; Z=CR7;
i.e., where: R4 =R6 =R7 = H
X = N
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2-Benzylpyrido[2,3-b]pyrazin-3-ol (22)
E = N
R2 = oxo;
R1 = C1-C6alkyl = CH3
A = aryl sub with H = -CH2-C6H5
n = 1
X = CR5; Y= CR6; Z=CR7
i.e., where: R4 = R5 = R7 =H
U = N
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3-Benzylpyrido[2,3-b]pyrazin-2-ol (23)
E = N
R2 = oxo;
R1 = H
A = aryl sub with H = -CH2-C6H5
n = 1
U = CR4; X = CR5; Y=CR6;
i.e., where: R4 = R5 = R6 =H
Z = N
Therefore, Gagnot anticipates the claimed invention.
[4] Claim(s) 1-2 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
U.S. Pat. No. 6,410,536 B1 to Dudley, Date of Patent: June 25, 2002 (EFD June 28, 2021)
U.S. ‘536 Pat. discloses 3-benzyl-2(1H)-quinoline-2-one:
U.S. ‘536 Pat.
Claimed Invention
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E = N
R2 = oxo;
R1 = H
A = aryl sub with H = -CH2-C6H5
n = 1
U = CR4; X = CR5; Y= CR6; Z=CR7
i.e., where: R4 = R5 = R6 = R7 =H
which reads on a compound of Formula (I) of claimed invention (i.e., see col. 41, lines 28-46)
U.S. ‘536 Pat. also teaches that compounds or therapeutic agents therein “may be administered alone or in combination with pharmaceutically acceptable carriers. The proportion of each carrier is determined by the solubility and chemical nature of the compound *i.e., which read on claims 19-20; see generally therein and col/ 26, lines 44-65)
Therefore, U.S. ‘536 Pat. anticipates the claimed invention.
[5] Claim(s) 1-2, 4-8 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
WO 2003/051878A1 to Merck Frost, Intern.’l Pub. Date: 16 June 2003
(Instant Appln. EFD June 28, 2021)
WO ‘878 Appln. discloses substituted 3-benzyl-2(1H)-quinoline-2-ones that read on a compound of Formula (I) of the claimed invention as exemplified by:
WO ‘878 Appln.
The Claimed Invention
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E = CR3; R3 =OH
R2 = oxo;
R1 = C1-C6alkyl = CH3
A = aryl sub with alkoxy = -OMe
n = 1
U = CR4; X = CR5; Y= CR6; Z=CR7
i.e., where: R4 = R5 = R6 = R7 =H
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E = CR3; R3 =OH
R2 = oxo;
R1 = C1-C6alkyl = CH3
A = aryl sub with C1-C6alkyl = -Me
n = 1
U = CR4; X = CR5; Y= CR6; Z=CR7
i.e., where: R4 = R5 = R6 = R7 =H
WO ‘878 also teaches throughout the specification that:
The pharmaceutical compositions of the present invention comprise a compound of Formula A or B as an active ingredient or a pharmaceutically acceptable salt thereof, and may also contain a pharmaceutically acceptable carrier and optionally other therapeutic ingredients (i.e., which reads on claims 19-20; see therein generally and at p. 26, lines 8-35, p. 27, lines 26-34 to p. 30, lines 1-20)
Therefore, WO ‘878 Appln. anticipates the claimed invention.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Independent claim 16 is found free of prior art based on conducted searches and allowable.
Claims 10-15 are 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.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to GRACE C HSU whose telephone number is (571) 270-1689. The Examiner can normally be reached Monday-Friday 7:30 am - 6 pm.
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Kortney L. Klinkel can be reached on 571-270-5239.
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/G.C.H./
Examiner, Art Unit 1627
/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627
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