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
Status of Claims
Claims 1-20 and 23-25 are pending where claim 24 is new and drawn to group I. Claim 25 is drawn to withdrawn method claims. Claims 3, 4, 6, 8, 9, 11, 12, 14-16, 20 and 25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 1, 2, 5, 7, 10, 13, 17-19, 23 and 24 is contained herein.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 9/8/2025 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 12/8/2025.
New Objections and Rejections
Claim Objections
Claim 18 is objected to because the instant claims possess non-elected subject matter. Applicant elected group I without traverse, drawn to compounds of the general formula (I). As stated in the Non Final office action, claim 18 contains a myriad of species such as the following:
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532
770
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168
222
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. These compounds have the limitation wherein Ra or b is selected from “alkanoyl”, R2 is substituted with “aryl” or unsubstituted completely. These limitations were not present in claim 1 at the time of initial examination. The examiner recommends that these species are removed from the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 5, 7, 10, 17, 19, and 23 are rejected under 35 U.S.C. 103(a) as being unpatentable over US Patent 6,218,537.
The instant claims may be drawn to the following compounds and compositions thereof:
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804
586
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556
590
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wherein the fluoro atom is replaced with other halogens such as Cl, Br, or I and other variables are defined as G = -CH, R1 = halo (excluding F) substituted phenyl, R2 = substituted phenyl, R3 = H, F = -NH, and A,B,D,E are selected from N and CH.
Patent ‘537 teaches a myriad of compounds and compositions thereof such as those shown above wherein R1 = fluoro substituted phenyl (see col. 58, lines 40-65 for compounds and col. 40, lines 29-65 for compositions thereof). The difference as stated previously is the substitution for fluorine with other halogens on the phenyl ring at variable R1. However the document teaches that any halogen atom may be used as a substituent on the phenyl ring and are equivalent (see col. 3, lines 58-65, variable R4 being phenyl):
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660
560
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. Thus the claimed compounds would have been considered obvious over the prior art.
Conclusion
Claims 1, 2, 5, 7, 10, 17, 19, and 23 are rejected. Claims 13, 18, and 24 are objected to. Again note that species where A=B=G= -CH, E=D= N, R1 = R2 = phenyl, and F = -NH were searched and the full scope of formula I has not been searched to determine full patentability due to art of record in accordance with MPEP 803.02.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624