DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant's election with traverse of Group I, and species of example I-06, in the reply filed on May 26, 2026 is acknowledged. The traversal is on the ground(s) that the examination of the full scope of all claims would not be an undue burden. This is not found persuasive because of the reasons previously set forth. As previously stated, a search of product requires multiple structural queries and the search and examination of method claims is not coextensive.
The requirement is still deemed proper and is therefore made FINAL.
3. Examination followed guidelines provided by MPEP 803.02. The elected species appeared to be novel and nonobvious over the prior art. Therefore, the search was extended. Prior art was found that makes obvious a nonelected species. Thus, the Markush claims were rejected and claims to nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species, the full scope of claims 19 and 21, and further to the nonelected species shown below.
4. Claims 4-9, 12-17, 22 and 23 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter. Applicant timely traversed the restriction (election) requirement in the reply filed on May 26, 2026.
Priority
5. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
6. The information disclosure statement (IDS) submitted on April 24, 2024 was in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS was considered. A signed copy of form 1449 is enclosed herewith.
Claim Objections
7. Claims 19 and 21 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.
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
9. Claim(s) 1-3, 10, 11, 18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20170197970.
Determining the scope and contents of the prior art
US 20170197970 teaches compounds of general structure
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as pharmacological agents.
Variable R3 is defined to be
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330
288
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.
Additionally, the reference teaches various embodiments within this general structure. For example:
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(page 162)
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182
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(page 171)
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198
252
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(page 173)
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140
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(page 179).
Ascertaining the differences between the prior art and the claims at issue
The difference between the present claims and the species in the prior art is F vs. H substitution at the phenyl ring.
Resolving the level of ordinary skill in the pertinent art - considering objective evidence present in the application indicating obviousness
The prior art suggests the modifications required to arrive at the present claims. Thus, the phenyl ring corresponding to variable R3 is generically contemplated to be poly substituted, with structural components such as halogen. Moreover, fluoro substitution is exemplified in the preferred embodiments (above) as well as two substituents. The skilled artisan would have a reasonable expectation of success in preparing additional compounds that would be within the scope of the present claims. The motivation would include to prepare additional compounds for a cited utility, which may also additionally result in compounds with better activity or pharmacological properties. For these reasons, it has been determined that the present claims are prima facie obvious over the prior art.
Conclusion
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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