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 .
According to paper filed on July 6, 2026, the applicants have elected compound 5-26 as specific species for further prosecution. The applicants have also canceled claims 77-84 and 92; amended claims 2, 75, 85 and 88 and furthermore, have added new claims 93-101.
Claims 2-3, 75-76, 85-91 and 93-101 are pending in the application.
The elected species is allowable over the prior art. Therefore, search has now been extended to additional species.
Claim Rejections - 35 USC § 112
5. 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 88-90, 98 and 99 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.
In claim 88, the structures of compound and reference compound are missing.
In claim 89, the term - - in a system - - is vague and indefinite since its actual intent is not clear. It is not clear how a system is being administered?
In claim 90, specific disease being treated but not prevented, are not defined.
Claim 98 recites the limitation "D for variable R1" in claim 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 99 recites the limitation "D for variable R1a" in claim 2. There is insufficient antecedent basis for this limitation in the claim.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Claims 2-3, 75-76, 85-87, 93-97, 100 and 101 are allowed since the instant compounds of claim 2 are neither disclosed nor obvious over the prior art. In the prior art, Wang (U.S. Patent 10,208,081 B2) discloses bile acid derivatives as FXR/TGR5 agonists and methods of use thereof. The compounds disclosed in table 11 (see columns 131-185) are closely related to the instant compounds. However, the compounds of Wang differ from the instant compounds in having a hydroxyl (OH) group at 3rd position instead of instant H or halogen. Furthermore, there is no teaching, suggestion or motivation in the prior art to modify the compounds of Wang to prepare instant compounds.
Claim 91 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARANJIT AULAKH whose telephone number is (571)272-0678. The examiner can normally be reached Monday-Friday 7:00-3:30.
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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621
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