Detailed Action
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 .
Status of the Claims
Claims 1-17 are pending. Claims 2, 4, 7-8, 11-13, and 15-17 are withdrawn. Claims 1, 3, 5-6, 9, and 14 are rejected. Claim 10 is objected to.
Information Disclosure Statement
The Information Disclosure Statements (IDS’s) submitted on 2/5/2024, 4/10/2025, and 10/8/2025 were considered by the Examiner.
Priority
This is a 35 U.S.C. 371 National Stage Filing of International Application No.
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, which claims priority under 35 U.S.C. 119(a-d) to
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. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d).
Election/Restrictions
Applicant’s election of Group I and the species Example 59:
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, which is embraced by a compound of formula (A-I) of instant claim 1:
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, wherein R4 =
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, q = 1; ring B =
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; L1 = -CH2-; ring A =
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; Q = C; V, X, Y = C; Z = N; R1 = -G1-R5, m = 1, G1 = -CH2-; R5 = -NR12R13, R12 = H; R13 = alkyl substituted with
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, R9 = alkyl; in the reply filed on 5/10/2026 is acknowledged. Because applicant 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 § 818.01(a)).
Claims 1, 3, 5, 6, 9, 10, and 14 embrace Applicant’s elected species and are therefore under examination. The elected species is free of the prior art. As per MPEP 803.02, “Following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability.” A non-elected species has been found incidental to the search of the elected species and rejected below in the interest of compact prosecution. Additionally, claims 3, 5, 9, and 10 have been searched in full and are free of the prior art.
Claims 2, 4, 7-8, 11-13, and 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 1 is objected to because of the following informalities: the word “consisting” is misspelled numerous times (see p. 2, last line, p. 3, lines 1, 4, 8-9, 13, 21, 27). Appropriate correction is required.
Claim 10 should have commas between each compound.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 5-6, 9 and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the phrase “preferably" (three locations: p. 2, line 5 and 5th from bottom line and p. 4, fourth from bottom line) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Examiner recommends deleting this phrase.
Claims 3, 5-6, 9 and 14 are additionally rejected for depending from claim 1 and failing to remedy its deficiencies.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 6, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hefferman et al. (WO2012162635-disclosed on 2/5/2024 IDS).
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Hefferman et al. disclose the following compound 38 on p. 83:
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. Hefferman additionally discloses the following on p. 5, line 3-5:
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.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art compound shown supra differs from a compound of the instant claims in that q = 0 (the instant claims allow for “q = 1, 2, or 3”).
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Regarding instant claims 1, 6, and 14, the prior art compound shown supra is similar to a compound of instant formula (A-1):
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wherein V, X, Y, Z = C; R1 = single bond-halogen (F), m = 1; Q = C; A =
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, n = 0, p = 0; L1 = -CH2-; ring B =
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. At the location of the instant “R4” are only hydrogen’s wherein the instant claims teach that this location may be alkyl. Alkyl includes methyl. The compounds as taught by the prior art and the compounds in the instant claims are considered structural analogs and hydrogen and methyl are deemed obvious variants. It is well established that the substitution of hydrogen for methyl on a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, Whittaker, Stirling, and Ohta, 582 F.2d 638, 199 U.S.P.Q 137 (C.C.P.A. 1978). In the instant case, a person having ordinary skill in the art at the time the invention was filed would have been motivated to synthesize the instantly claimed analogs with the reasonable expectation that it would have the same utility as the closest structurally related compounds taught by the prior art and with the motivation of obtaining additional useful compounds. A person of ordinary skill in the art would have expected them to be useful in the same utilities and been motivated to apply them in the same methods.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Clark can be reached at 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGHAN C HEASLEY/Examiner, Art Unit 1626
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