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
Priority
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, is acknowledged.
Status of Claims
Claims 1-10 and 13-15 are currently pending in the application. Claims 11-12 have been canceled.
Receipt is acknowledged of amendment / response filed on April 07, 2026 and that has been entered.
Response to Election/Restriction
In response to the restriction requirement, Applicants have elected Group I, which includes claims 1-10, drawn to a compound of formula I or a pharmaceutically acceptable salt thereof, and the elected species as set forth and found to a compound B-3-5, such as,
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, is acknowledged.
Because Applicants 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 § 818.03(a). Therefore, the requirement for restriction is still deemed proper made it final.
Claims 13-15 are withdrawn from further consideration pursuant to 37 C.F.R. 1.142 (b) as being drawn to a non-elected subject matter. Therefore, the requirement for restriction is still deemed proper and made it final.
Applicants preserve their right to file a divisional on the non-elected subject matter.
As set forth in the restriction requirement and an election of a single compound (or set of compounds), the scope of the invention which has been examined, inclusive of the elected species has resulted in the following generic concept.
A compound of formula I or a pharmaceutically acceptable salt thereof wherein:
A1 is limited to
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,
m1 and m2 are 1,
A2 is as claimed and
A3 is limited to
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only.
As a result of the election and the corresponding scope of the compound identified, claims 13-15 and the remaining subject matter of claims 1-10 are withdrawn from further consideration pursuant to 37 CFR 1.142 (b) as being drawn to non-elected inventions. The withdrawn subject matter of claims 13-15 is properly restricted as it differs materially in structure and in element from the elected subject matter supra so as to be patentably distinct there from.
Objections
Claims 1-10 are objected to for containing non-elected subject matter. The claims should be amended to exclude non-elected subject matters and within the scope of elected compound.
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.
Claims 1-10 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Heiser et al (WO 2011/131748 A2). Applicant claims a compound of formula I and derivatives, pharmaceutical compositions and their method of uses thereof. Heiser et al also discloses several identical compounds and compositions, which anticipate the instantly claimed inventions, wherein A1 is
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, m1 is 1, m2 is 0, A2 is bond and A3 is alkyl, cycloalkyl or phenyl [
[
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, Heiser et al, pages 62-63, a copy is provided with this Office action].
Objections
The expressions “solvate”, “active metabolite” and “polymorph” should be deleted from claim 1 [(recited in line 14, page 2) and claim 10 (line 2, page 6, and all other occurrences, if any)], because the terms are undefined and/or poorly defined by Applicant’s disclosure.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Golam Shameem, Ph.D. whose telephone number is (571) 272-0706. The examiner can normally be reached on Monday-Thursday from 7:30 AM - 6:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks, Ph.D. can be reached at (571) 270-7682.
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://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Any inquiry of a general nature or relating to the status of this application should be directed to the Group receptionist, whose telephone number is (571) 272-1600.
/GOLAM M SHAMEEM/Primary Examiner, Art Unit 1621
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