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
Priority
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, is acknowledged.
Status of Claims
Claims 1-15 and 21-25 are currently pending in the application. Claims 16-20 have been canceled.
Receipt is acknowledged of amendment / response filed on June 22, 2026 and that has been entered.
Information Disclosure Statement
Receipt is acknowledged of Information Disclosure Statement (IDS), filed on 02/28/2024, which has been entered in the file.
Response to Election/Restriction
In response to the restriction requirement, Applicants have elected Group I, which now includes claims 1-15 and 21-25 drawn to a compound and a composition comprising a compound of formula (I) and the elected species as set forth and found to Example 22, such as,
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, without traverse (Response, page 33), is acknowledged.
Claims 16-20 (currently canceled) are withdrawn from further consideration pursuant to 37 C.F.R. 1.142 (b) as being drawn to a non-elected subject matter. Therefore, the requirement for restriction is still deemed proper and made it final.
Applicants preserve their right to file a divisional on the non-elected subject matter (if any).
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 2 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Wurtz et al (2016). Applicant claims a compound of formula (I) or a pharmaceutically acceptable salt and the method of uses thereof. Wurtz et al also disclose an identical compound, which anticipates the instantly claimed inventions, wherein W is a C3-C8 cycloalkyl group, Z is N(R2), wherein R2 is a hydrogen atom, and R is also a hydrogen atom [
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, STN International, CAPLUS database, Accession Number 2016 : 1525003, a copy is provided with this Office action].
Objections
Claims 3-15 and 21-25 are objected to as being dependent upon a rejected base claim 1, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 9 and 10 are grammatically confusing because the Markush group of compounds recited by chemical formula / name does not comprise an "and" between the penultimate and the last compound (see pages 24, 29). Correction / amendment by inserting an "and" would resolve this issue.
Claims 9-14 are also objected to, because there is no period at the end of the above claims. This format does not conform to M.P.E.P 608.01 (m) since each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claim except for abbreviations. Correction is required.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Golam Shameem, Ph.D. whose telephone number is (571) 272-0706. The examiner can normally be reached on Monday-Thursday from 7:30 AM - 6:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks, Ph.D. can be reached at (571) 270-7682.
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://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Any inquiry of a general nature or relating to the status of this application should be directed to the Group receptionist, whose telephone number is (571) 272-1600.
/GOLAM M SHAMEEM/Primary Examiner, Art Unit 1621
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