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
This is a response to Applicant’s communication filed on August 6, 2026. Application No. 18/649,114, filed April 29, 2024, is a Continuation of U.S. Nonprovisional application No. 16/344,195, (issued U.S. Patent No. 11,970,486) which is a 371 of PCT/US2017/058144, filed October 24, 2017, and claims the benefit of U.S. Provisional applications Nos. 62/534,990, filed July 20, 2017; 62/443,040, filed January 6, 2017; and 62/412,119, filed October 24, 2016. In a preliminary amendment filed May 13, 2025, Applicant canceled claims 2, 6-18, 22-35, 38-44, 47-60, 62-64, 66-68, 70-72, 75, 76, 78-104, 106-120, 132-136, 139-146, and 149-165. In an amendment filed October 15, 2025, Applicant cancelled claims 3,4, 30-33, 36, 37, 45, 46, 61, 65, 69, 73, 131, 137-138, 147-148, and added new claims 165-182. In an amendment filed March 19, 2026, Applicant cancelled claims 74 and 172. Claims 121, 122, 125-130, 171, 173-178 and 182 are currently withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species. (Please note that claim 129 does not read on the elected species, because the piperidine ring is separated from L1-C(O)(m is 1)-R1 by a methylene linker, which is not present in the elected species. Accordingly, claims 129 and dependent claims, claims 171 and 173-178 are withdrawn until the claims reading on the elected species are found allowable.)
Claims 1, 5, 19, 77, 105, 123, 124, 165-170, and 179-181 are examined below.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 22, 2026, has been entered.
Rejection Maintained
Claim Rejections - 35 USC § 102(a)(1)
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.
The rejection of claims 1, 5, 19, 77, 123, and 165-169 under 35 U.S.C. 102(a)(1) as being clearly anticipated by Bosmans, US. Patent No. 5,854,261, is maintained for reasons made of record. Applicant argues that the compound(s) disclosed in Bosmans do(es) not read on the Markush formula of Formula Ia of claim 1; specifically Applicant focuses on the L1 and L2 linking groups of Formula Ia as not being present (or absent) in the compound(s) disclosed in Bosmans. Applicant’s argument has been fully considered and is not persuasive.
The CAS Abstract for Bosmans discloses the following compound and pharmaceutical compositions thereof:
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259
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(Bosmans, citing CAS Abstract for the compound depicted above; see Bosmans, ‘261 patent, Abstract, for pharmaceutical compositions of the compounds disclosed therein.) This compound reads on a compound of Formula Ia, wherein Formula Ia, m is 1; n is 0 (i.e., L1 is absent); L2 is absent; B is piperidine; Het is a 1,2,4-oxadiazol; R1 is C2-heteroalkyl (i.e., ethoxy, or -O-CH2-CH3); and R5 is a 4-amino, 7-chloro substituted benzofuranyl (C8-hteteroaryl). This compounds is disclosed in Bosmans at Bosmans, U.S. ‘261 patent, Col. 8, lns. 40-43, Example 3.
Conclusion
Claims 1, 5, 19, 77, 123, and 165-169 are not allowed.
Claims 105, 124, 170, and 179-181 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.
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY R ROZOF whose telephone number is (571)270-5992. The examiner can normally be reached on Monday - Friday, 9:00 a.m. -5:00 p.m..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached on (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TIMOTHY R ROZOF/
Primary Examiner, Art Unit 1625
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