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 1-20 are pending.
Applicants’ arguments, filed on 07/30/2026, have been fully considered. Rejections and/or objections not reiterated from previous Office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Applicants’ amendments filed on 07/30/2026, have been entered into the record. Applicants have amended claims 1, 12 and 14. Claims 15-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected invention. Claims 5-8 and 11 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected species of a compound of Formula I. Therefore, claims 1-4, 9-10 and 12-14 are subject of the Office action below.
Withdrawn Rejections
The rejection of claims 1-4, 9-10, 12 and 13-14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is overcome by the Applicants’ amendments and is hereby withdrawn. For example, Applicants have amended claim 1 so that R7 is no longer selected from the group consisting of “hydrogen, (C1-C15) alkyl, (C1-C₁₅) alkoxy, substituted or unsubstituted (C1-C₁₅) alkyl aryl, substituted or unsubstituted (C₁-C₁₅) alkyl heteroaryl, substituted or unsubstituted cycloalkyl, substituted or unsubstituted heterocyclyl, substituted or unsubstituted aryl, and substituted or unsubstituted heteroaryl”.
The rejection of claims 1-4, 9-10 and 12-13 under 35 U.S.C. 102(a)(1) as being anticipated by CRN2490510-68-2 of record, is overcome by the Applicants’ amendments and is hereby withdrawn. For example, Applicants have amended claim 1 so that claim 1 no longer recites “unsubstituted heterocyclyl”.
Claim Objections
Claims 5-8 and 11 are objected to under 37 CFR 1.71(a) because the claims are presented using an incorrect status identifier. Claims 5-8 and 11 are presented as “Original”, however, the claims have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected species of a compound of Formula I (see Office action mailed on 05/15/2026). Please see MPEP § 714. Appropriate correction is required.
Claim 14 is objected to under 37 CFR 1.71(a) because a compound of Formula I:
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does not read on each of the recited compounds:
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,
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, or
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, recited in claim 14. Furthermore, each of compounds:
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,
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, and
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, recites “unsubstituted heterocyclyl”, which is no longer required in amended claim 1. It is recommended that Applicants amend claim 14 to delete these compounds. Appropriate corrections are required.
Claim Rejections - 35 USC § 112
New Grounds of Rejection Necessitated by Applicant’s Amendments
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 1-4, 9-10, 12 and 13-14 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. Claims 2-4, 9-10, 12 and 13-14 depend from claim 1, and are therefore, also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for reasons set forth below.
Claim 1 when referring to variables R1, R2, R3 and R4, recites “substituted unsubstituted heterocyclyl”, which does not make any sense. For the purpose of examination, the phrase is being interpreted as “substituted heterocyclyl”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
New Grounds of Rejection Necessitated by Applicant’s Amendments
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.
Claims are 1-4, 9-10 and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CRN1966839-28-0 (available 08/04/2016).
The claimed invention is drawn to a compound of Formula I:
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Regarding claims 1-4, 9-10 and 12-13, CRN1966839-28-0 teaches compound:
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, which is a compound of Formula I, wherein:
R1, R2, R4, R5, R6, R8, R9 = H;
R3 = unsubstituted C1 alkyl;
R7 = -CH2CH2-phenyl; and
X = NR (R =H).
Therefore, claims 1-4, 9-10 and 12-13 are anticipated by CRN1966839-28-0.
Claims are 1-4, 9 and 12-13 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhou et al (hereinafter “Zhou”, U.S. Pub. No. 20140336375, published 11/13/2014).
Regarding claims 1-4, 9 and 12-13, Zhou (see e.g., Table 1 on column 8), teaches compound CYD-3-61:
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, which is a compound of Formula I, wherein:
R1, R4, R5, R6, R8, R9 = H;
R2 = CH(CH3)(OH);
R3 = substituted heterocyclyl;
R7 = -CH2CH2-phenyl; and
X = NR (R =H).
Therefore, claims 1-4, 9 and 12-13 are anticipated by Zhou.
Claim Rejections - 35 USC § 103
New Grounds of Rejection Necessitated by Applicant’s Amendments
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.
Claims 1-4, 9-10 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou (U.S. Pub. No. 20140336375), as applied claims 1-4, 9 and 12-13.
The limitations of claims 1-4, 9 and 12-13 as well as the corresponding teachings of Zhou are described above and are hereby incorporated into the instant rejections.
The inventions of claims 10 and 14 are similar to claim 1, however, claims 10 and 14 differ slightly from claim 1 in that the claims require: i) a compound of Formula I, wherein at least two of R1, R2 and R3 are H (claim 10); and ii) a compound of Formula I selected from the group consisting of the list disclosed therein (claim 14).
Although Zhou teaches exemplary compounds such as compound CYD-3-61 (see discussions above), Zhou differs from claims 10 and 14 only insofar as Zhou does not explicitly teach an exemplary compound within the compound limitations of claims 10 and 14.
However, the claimed inventions would have been obvious over Zhou, because Zhou (see e.g., ¶s 0008-0017), teaches a compound general of Formula I:
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, which encompasses a compound of the claimed invention, wherein:
i) X can be C1-15 alkyl and R3 can be substituted or unsubstituted aryl (see ¶s 0015-0016), and teaches -CH2CH2-phenyl (R7 of compounds of claims 1, 10 and 14) in compound CYD-3-61 (see discussions above);
ii) Y can be NH (see ¶ 0009);
iii) Z can be CH (see ¶ 0010); and
iv) similar to instant claim 1, each of R1, R2, can be H, halogen, nitro, cyano, hydroxy, amino, mercapto, formyl, carboxy, oxo, carbamoyl, substituted or unsubstituted alkyl, substituted or unsubstituted heteroalkyl, alkoxy, alkylthio, alkylamino, (alkyl)2-amino, alkylsulfinyl, alkylsulfonyl, arylsulfonyl, substituted or unsubstituted cycloalkyl, substituted or unsubstituted heterocyclyl, substituted or unsubstituted aryl, substituted or unsubstituted phenyl, and substituted or unsubstituted heteroaryl (see ¶ 0012).
A compound of Formula I, in which Z = CH, R1 = H and R2 = substituted alkyl, encompasses a compound of claims 1, 10. Zhou teaches compounds in which R2 is, for example, substituted alkyl such as
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(see Figures 10A-10E and Table 1).
A compound of Formula I, in which Z = CH, R1 and R2 = substituted alkyl, encompasses a compound of claims 1 and 14. Zhou (see, e.g., Figure 10A-10E and Table 1), teaches compounds in which R1 and R2 = substituted alkyl, such as
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(recited in compound AB0126 of instant claim 14).
Zhou discloses compounds of the invention as allosteric modulators of 5-HT2cR, which can be employed as probes for the nervous system and/or therapeutics for the treatment of diseases, including, but not limited to addiction, anxiety, depression, obesity, eating disorders, Parkinson’s disease, and schizophrenia (see e.g., ¶s 0007 and 0063).
Zhou (see e.g., ¶s 0007, 0087 and 0123-0124), provides methods for synthesizing the compounds of Formula I.
Accordingly at the time of the instant invention, a person skilled in the art would have envisaged a compound of claims 10 and 14, in the disclosure of Zhou.
One skilled in the art would have employed appropriate reaction conditions in the synthetic protocol of Zhou in to arrive at a compound of claims 10 and 14, with a reasonable expectation that such compound would exhibit utility as allosteric modulators of 5-HT2cR, which can be employed as probes for the nervous system and/or therapeutics for the treatment of diseases, including, but not limited to addiction, anxiety, depression, obesity, eating disorders, Parkinson’s disease, and schizophrenia.
Obviousness requires only a reasonable expectation of success, not complete confidence in a given outcome; "at least some degree of predictability" is all that is required. M.P.E.P. § 2143.02.
The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Thus, the claims fail to patentably distinguish over the state of the art as represented by the cited reference.
Conclusion
No claim is allowable.
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.
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Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM D BORI whose telephone number is (571)270-7020. The examiner can normally be reached on Monday through Friday 8:00AM-5:00PM(EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY S LUNDGREN can be reached on 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IBRAHIM D BORI/
Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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