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
Claims 1-4, 9-21 and 23-25 are pending in the application. Claims 1-4, 9-14 and 16 are rejected. Claims 1 and 15 are objected to. Claims 17-21 and 23-25 are withdrawn.
Restriction/Election of Species
Applicant’s election without traverse of Group I, claims 1-4 and 9-16, and the further elected species, shown below, in the reply filed on June 15, 2026 is acknowledged.
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Claims 17-21 and 23-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 15, 2026.
As per MPEP § 803.02(III), the examiner will determine whether the entire scope of the claims is patentable. Applicant’s elected species appears to be free of the prior art. Therefore, according to MPEP § 803.02(III): should the elected species be found allowable over the prior art, the examination of the Markush claim will be extended. The prior art search will be extended to cover non-elected species or group of species that fall within the scope of a proper Markush grouping which includes the elected species. The prior art search will not be extended unnecessarily to cover all nonelected species, and need not be extended beyond a proper Markush grouping. However, if prior art is found that anticipates or renders obvious the Markush claims with respect to a nonelected species, the Markush claims shall be rejected and claims to the nonelected species held withdrawn from further consideration. Consequently, the prior art search was extended to include the compounds (i.e., C1, C2, C3, C4 and C5) recited in instant claim 15 as well as the following non-elected species:
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Priority
This application is a 35 U.S.C. § 371 National Stage Filing of International Application No. PCT/US2022/045904, filed on October 6, 2022, which claims benefit of Provisional Application No. 63/253,341, filed on October 7, 2021.
Information Disclosure Statement
The Information Disclosure Statement(s) (IDS) filed on April 5, 2024 and August 12, 2025 are in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the Examiner has considered the IDS documents and signed copies of the 1449 forms are attached.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 should be amended to recite “...each occurrence of Y is independently selected from the group consisting of R, F, Cl ... C3-10 heterocycloalkyl, and C5-10 heteroaryl...” for sake of clarity and consistency.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. § 112(d):
(d) REFERENCE IN DEPENDENT FORMS — Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. § 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. § 112(d) or pre-AIA 35 U.S.C. § 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 12 recites the expression “Z1 is H, and R1 is absent.” Parent claim 1, however, is narrower in scope than dependent claim 12 as parent claim 1 does not provide for variable definitions wherein “Z1 is H, and R1 is absent.” Therefore, dependent claim 12 fails to further limit the subject matter of parent claim 1. It is suggested Applicant replace the expression “Z1 is H, and R1 is absent” with “-(Z1)n1-R1 is H” (as recited in parent claim 1) to overcome this issue of improper dependent form.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-4 and 16 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by CAS Registry No. 179125-68-9 (entered STN on August 7, 1996).
(1 of 5) CAS Registry No. 179125-68-9 corresponds to the following chemical structure:
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Regarding instant claims 1 and 4, the above prior art structure is encompassed by the instantly claimed compound of Formula I, wherein Y is hydrogen; n is 1; X is O; the X-C* bond is a single bond; the G-C* bond is a single bond; A is C6 aryl substituted by R, further wherein R is C1 alkyl; G is C; Z2 is CH2; n2 is 1; R2 is R, further wherein R is hydrogen; Z1 is O; n1 is 1; and R1 is R, further wherein R is hydrogen.
Regarding instant claim 2, the above prior art structure is encompassed by the instantly claimed compound of Formula I-1, wherein Y is hydrogen; n is 1; A is C6 aryl substituted by R, further wherein R is C1 alkyl; Z2 is CH2; n2 is 1; R2 is R, further wherein R is hydrogen; Z1 is O; n1 is 1; and R1 is R, further wherein R is hydrogen.
Regarding instant claim 3, the above prior art structure is encompassed by the instantly claimed compound of Formula I-E2, wherein Y is hydrogen; n is 1; X is O; A is C6 aryl substituted by R, further wherein R is C1 alkyl; G is C; Z2 is CH2; n2 is 1; R2 is R, further wherein R is hydrogen; Z1 is O; n1 is 1; and R1 is R, further wherein R is hydrogen.
Regarding instant claim 16, the prior art teaches the above prior art compound in “Unbuffered Water” (i.e., a pharmaceutically acceptable carrier). See e.g., page 3.
(2 of 5) Claims 1-4, 9-11, 13, 14 and 16 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by CAS Registry No. 1799962-79-0 (entered STN on July 21, 2015).
CAS Registry No. 1799962-79-0 corresponds to the following chemical structure:
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Regarding instant claims 1, 4, 9-11, 13 and 14, the above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula I, wherein X-C* bond is a single bond; the G-C* bond is a single bond; X is O; G is C; Y is Br; n is 1; A is phenyl substituted with NO2 (i.e., p is 1 and Q is NO2 with respect to instant claim 9); Z1 is CH2; n1 is 1; R1 is C3 alkyl; and -(Z2)n2-R2 is H.
Regarding instant claim 2, the above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula I-1, wherein Y is Br; n is 1; A is phenyl substituted with NO2; Z1 is CH2; n1 is 1; R1 is C3 alkyl; and -(Z2)n2-R2 is H.
Regarding instant claim 3, the above prior art structure is encompassed by the instantly claimed compound of Formula I-E2, wherein Y is Br; n is 1; X is O; A is phenyl substituted with NO2; G is C; Z1 is CH2; n1 is 1; R1 is C3 alkyl; and -(Z2)n2-R2 is H.
Regarding instant claim 16, the prior art teaches the above prior art compound in “Unbuffered Water” (i.e., a pharmaceutically acceptable carrier). See e.g., page 2.
(3 of 5) Claims 1-3, 9, 10, 12-14 and 16 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Majumdar et al. (J Org Chem, 2017, 82(4):2097–2106).
Majumdar et al. teach Compound 3p which corresponds to the following chemical structure (see e.g., Table 4):
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Regarding instant claims 1, 9, 10 and 12-14, the above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula I, wherein X-C* bond is a single bond; the G-C* bond is a single bond; Y is Cl; n is 1; A is phenyl substituted with NO2 (i.e., p is 1 and Q is NO2 with respect to instant claim 9); X is NH; G is N; -(Z1)n1-R1 is H; and Z2 and R2 are absent.
Regarding instant claim 2, the above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula I-3, wherein Y is Cl; n is 1; A is phenyl substituted with NO2; and -(Z1)n1-R1 is H.
Regarding instant claim 3, the above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula I-E1/I-E2, wherein Y is Cl; n is 1; A is phenyl substituted with NO2; X is NH; G is N; -(Z1)n1-R1 is H; and Z2 and R2 are absent.
Regarding instant claim 16, Majumdar et al. teach the reaction mixture was carried out using water (i.e., a pharmaceutically acceptable carrier) and acetonitrile.
(4 of 5) Claims 1-3, 9, 10 and 12-14 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Cui et al. (Asian J Chem, 2014, 26(9): 2553-2556).
Cui et al. teach Compound 1p which corresponds to the following chemical structure (see e.g., Table 1):
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Regarding instant claims 1, 4, 9 and 12-14, the above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula I, wherein X-C* bond is a single bond; the G-C* bond is a single bond; wherein Y is hydrogen; n is 1; X is O; A is phenyl substituted with NO2 (i.e., p is 1 and Q is NO2 with respect to instant claim 9); G is N; -(Z1)n1-R1 is H; and Z2 and R2 are absent.
Regarding instant claim 2, the above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula I-6, wherein Y is hydrogen; n is 1; and A is phenyl substituted with NO2.
Regarding instant claim 3, the above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula I-E1/I-E2, wherein Y is hydrogen; n is 1; X is O; A is phenyl substituted with NO2; G is N; -(Z1)n1-R1 is H; and Z2 and R2 are absent.
(5 of 5) Claims 1-3, 9, 10 and 12-14 and 16 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by CAS Registry No. 293326-06-4 (entered STN on October 6, 2000).
CAS Registry No. 293326-06-4 corresponds to the following chemical structure:
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Regarding instant claims 1, 4, 9 and 12-14, the above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula I, wherein X-C* bond is a single bond; the G-C* bond is a single bond; wherein Y is hydrogen; n is 1; X is O; A is phenyl substituted with NO2 (i.e., p is 1 and Q is NO2 with respect to instant claim 9); G is N; -(Z1)n1-R1 is H; and Z2 and R2 are absent.
Regarding instant claim 2, the above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula I-6, wherein Y is hydrogen; n is 1; and A is phenyl substituted with NO2.
Regarding instant claim 3, the above prior art compound is encompassed by variable definitions of the instantly claimed compound of Formula I-E1/I-E2, wherein Y is hydrogen; n is 1; X is O; A is phenyl substituted with NO2; G is N; -(Z1)n1-R1 is H; and Z2 and R2 are absent.
Regarding instant claim 16, the prior art teaches the above prior art compound in “Unbuffered Water” (i.e., a pharmaceutically acceptable carrier). See e.g., page 2.
Allowable Subject Matter
Claim 15 is 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.
Conclusion
No claims are allowed.
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/D.M.S./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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