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 .
Priority
Instant application 18/706,816 filed on 05/02/2024 claims benefit as follows:
CONTINUING DATA:
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34
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Status of the Application
Claims 1, 2, 5, 6, 17, 20, 25, 28, 30, 33, 36-43, 45, 46 and 48 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/02/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 07/20/2026 is acknowledged.
Claims 45, 46 and 48 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/20/2026.
Regarding species election, Applicant’s election without traverse of Compound A112 in the reply filed on 07/20/2026 is acknowledged.
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It should be noted that Z is a substituted phenyl (substituted with F).
Claim 33 is directed to a compound of claim 30 wherein Z is an unsubstituted phenyl group or an unsubstituted pyridyl. Therefore, claim 33 does not read on the elected species (claim 36 reciting substituted phenyl reads on the elected species).
Claims 5, 17, 20, 25, 28, 33, 40, 42 and 43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/20/2026.
Examination will begin with the elected species. In accordance with the MPEP 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
As per MPEP 803.02, the Examiner will attempt to determine whether the entire scope of the claims is patentable. Applicants' elected species, as shown above, does make a contribution over the prior art. Therefore, according to MPEP 803.02: should the elected species appear allowable; the search of the Markush-type claim will be extended. The search and examination should be continued until either (1) prior art is found that anticipates or renders obvious a species that falls within the scope of a proper Markush grouping that includes the elected species, or (2) it is determined that no prior art rejection of any species that falls within the scope of a proper Markush grouping that includes the elected species can be made. The Examiner need not extend the search beyond a proper Markush grouping.
Species Election
A careful review of the prior art has indicated that elected species is free of the prior art. A claim directed to the elected species in independent form would be free of prior art.
The examiner has moved onto alternative species embodied within the general formula recited in instant claim 1, and subsequent examination is based on this species expansion.
The whole scope of claim 1 has not been searched.
Claim Objections
Claim 41 is objected to for including unnecessary reference to the specification.
MPEP 2173.05(s) states: “Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993)”. The structures of the recited compounds could be readily and practically listed in claim 41. Alternatively, chemicals names may be added into the claim.
Claim Rejections - 35 USC § 102
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 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, 2, 6, 30, 36, 37 and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2017/003902A1 (the reference has been provided with the previous office action).
WO2017/003902A1 teaches and claims a method of treating a disease (see claim 12):
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WO2017/003902A1 (see paragraph [0081], page 27) teaches:
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that falls under instant Formula (I)
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wherein R1 is C(=O)C1alkyl, R2 is OH, X1 is C-OH, A is
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, Y is O, and Z is substituted phenyl group.
Claims 1, 2, 6, 30, 36, 37 and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN (RN 1980011-90-2, entered to STN 25 Aug 2016)
STN teachers:
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The above compound falls under instant Formula (I)
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wherein R1 is C1alkyl, R2 is N(RN1)2, RN1 is H, X1 is C-OH, A is
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, Y is O, and Z is substituted phenyl group.
Regarding claims 37 and 38, it should be noted that Z (phenyl) is substituted with OH, C1alkyl and N(RN1)2 wherein each RN1 is H.
The above compound was entered into STN on August 25, 2016. MPEP 2128 (I)(B) states “Electronic publications on the internet or on an online database are considered to be publicly available as of the date the item was publicly posted”.
Allowable Subject Matter
Claim 39 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 claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IZABELA SCHMIDT whose telephone number is (703)756-4787. The examiner can normally be reached Monday - Friday from 9 am to 5 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, Clinton A Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE W KOSTURKO/Primary Examiner, Art Unit 1621
/I.S./Examiner, Art Unit 1621
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