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 1-3 and 9-12 are pending in the application. Claims 1, 2, 9 and 10 are rejected. Claims 1, 9 and 10 are objected to. Claims 11 and 12 are withdrawn. Claim 3 is allowed.
Restriction/Election of Species
Applicant’s election without traverse of Group I, claims 1-3, 9 and 10 and further elected species (shown below) in the reply filed on February 23, 2026 is acknowledged:
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.
Claims 11 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 23, 2026.
As per MPEP § 803.02(III), the examiner will determine whether the entire scope of the claims is patentable. Applicant’s elected species appears to be free of the prior art. Therefore, according to MPEP § 803.02(III): should the elected species be found allowable over the prior art, the examination of the Markush claim will be extended. The prior art search will be extended to cover non-elected species or group of species that fall within the scope of a proper Markush grouping which includes the elected species. The prior art search will not be extended unnecessarily to cover all nonelected species, and need not be extended beyond a proper Markush grouping. However, if prior art is found that anticipates or renders obvious the Markush claims with respect to a nonelected species, the Markush claims shall be rejected and claims to the nonelected species held withdrawn from further consideration. Consequently, the prior art search was extended to include the following non-elected species:
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and
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.
The prior art search was also extended to search the full scope of claim 3 but did not result in prior art being found.
Claims 1-3, 9 and 10 read on the elected species. Claims 11 and 12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Priority
This application is a 35 U.S.C. § 371 National Stage Filing of International Application No. PCT/US2022/035336, filed on June 28 2022, which claims benefit of Provisional Application No. 63/215,818, filed on June 28, 2021.
Information Disclosure Statement
The Information Disclosure Statement(s) (IDS) filed on December 28, 2023, April 9, 2025 and April 16, 2026 are in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the Examiner has considered the IDS documents and signed copies of the 1449 forms are attached.
Claim Objections
Claims 1, 9 and 10 are objected to because of the following informalities:
Claim 1 should be amended to replace “where in” with -wherein- for sake of clarity and consistency.
Claim 1 should be amended to include the word -and- between
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for sake of proper Markush language.
Claim 1 should be amended to include the word -and- before “haloaryl” as recited in the definition for variable “R4” for sake of proper Markush language.
Claim 1 should be amended to replace the semicolon found at the end of the claim with a period.
Claim 9 should be amended to cancel the period appearing after the last recited compound structure for sake of clarity.
Claim 10 should be amended to replace “comprising a compound of claim 1” with -comprising the compound of claim 1- for sake of consistency.
Appropriate correction is required.
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, 2, 9 and 10 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by PCT Publication No. WO 2019195761 A2 (October 10, 2019).
The prior art teaches the following chemical compounds on e.g., page 4:
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(i)
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(ii)
Regarding instant claim 1, the above prior art compound (i) is encompassed by variable definitions of the instantly claimed formula (I), wherein R1 is
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; R2 is hydrogen; and R3a, R3b, R3c and R3d are each hydrogen.
Regarding instant claims 1 and 2, the above compound (ii) is encompassed by variable definitions of the instantly claimed compound of formula (I), wherein R1 is
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, further wherein R5a is (C1)alkyl; R2 is hydrogen; and R3a, R3b, R3c and R3d are each hydrogen.
Regarding instant claim 9, the above prior art compound (i) corresponds to the second recited compound of the claim.
Regarding instant claim 10, the prior art teaches e.g., that “[f]ormulations are usually aqueous and may commonly include solubilization enhancers such as, but not limited to, polyvinyl alcohol, Tween 80, solutol, cremophore, and cyclodextrin.” See e.g., page 37.
Conclusion
Claims 1, 2, 9 and 10 are rejected. Claims 1, 9 and 10 are objected to. Claims 11 and 12 are withdrawn. Claim 3 is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID SHIM whose telephone number is (571)270-1205. The examiner can normally be reached Monday - Friday, 9 AM - 5 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RENEE CLAYTOR can be reached at (571)272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.M.S./Examiner, Art Unit 1626
/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626
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