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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3, 11, 13, 16-18, 25 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Weiler US Patent 12583825. Weiler teaches a Markush of compounds such as (Int-IA) and (Int-IB) on Col 31 lines 10 and 35 and compounds such as page 68 Col 127 as intermediates that anticipate the instant compounds. The difference between the Markush of compounds taught by Weiler and the instant compounds is that Weiler teaches a large Markush of compounds but does not specifically make the instantly claimed compounds. The compounds Weiler make has a =N at the A position of the tricyclic compound and not a CH2 or C(O) as instantly claimed. However, it would have been obvious to the ordinary artisan to make the compounds taught by Weiler with the substituents as instantly claimed with a reasonable expectation of getting compounds having pharmaceutical activity. Rationale: Weiler teaches a large Markush that encompasses the instant compounds and that the final product compounds are useful as pharmaceuticals.
Claim Objections
Claims 19, 23, 24 and 26 are objected to because of the following informalities: These claims depend on a rejected base claim but would be allowable if rewritten in independent form with all intervening limitations. Appropriate correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D MARGARET M SEAMAN whose telephone number is (571)272-0694. The examiner can normally be reached M-F 8am-4pm Eastern.
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/D MARGARET M SEAMAN/Primary Examiner, Art Unit 1625
