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 .
This is the first action on the merits.
Election/Restrictions
Applicant's election with traverse of Group (I) in the reply filed on June 29, 2026 is acknowledged. Group (I), drawn to compounds of formula (I), substituted haloalkoxy pyridines, and compositions thereof, embraced by claims 1, 11, 12, 16, 20, 22, 25, 26, 29-34, 44, 45, 53 and 54 was elected by Applicant. The traversal is on the ground(s) that no burden is present and unity of invention does exist between Groups (I-III) since there is a contribution over the prior art.
This is not found persuasive because a search and examination burden, which is argued for the species election, only apply to US cases, not 371 applications.
Unity of invention does not exist based on the art rejection applied herein. This is all that is required to break unity of invention. Thus, the invention does not make a contribution over the prior art.
Applicant has not pointed to any errors in the Examiner’s analysis of the classification of the different inventions. The requirement is still deemed proper and is therefore made FINAL.
Applicant elected with traverse the following species:
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Applicant traverses the species election by stating,
Applicant indicated claims 12, 31, 32 and 80-82 read on said species. However, claim 31 does not read on the elected species and is therefore, withdrawn.
Claims 12, 31, 32, 70, 72 and 80-82 are pending and claims 12, 32 and 80-82. Claims 80-82 are new claims. Claim 31 is withdrawn based on the species election and claims 70 and 72 are withdrawn based on the lack of unity.
Specification
The title of the invention is objected to as not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The following title is suggested: remove the term “Novel” from the title.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 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.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 12, 32 and 80-82 are rejected under AIA 35 U.S.C. 103(a) as being unpatentable over Szekeres et al. (WO 2020163268).
The present application claims the following species:
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The ‘268 publication teaches the following species:
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, see page 11 as a KV7.2 enhancer, which is the same utility as the present case.
The only difference between the claimed compound and the cited compound is the attachment of the CF3 group at R5 and R6. These compounds are positional isomers and are considered equivalent. The MPEP 2144.09 states “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Moreover, the following species is found in the present claim 82:
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This is a specific stereoisomer at the CF3 group. Applicants are requested to note that MPEP § 2144.09 teaches that stereoisomers are prima facie obvious. See also In re May, 574 f.2d 1082, 197 USPQ 601 (CCPA 1978).
Thus, said claims are rendered obvious over Szekeres et al.
Double Patenting
No obviousness-type double patenting rejections over co-pending applications 18665797 and 18749828 are being made because there is no overlap at the combination of R4, R5 and R6. Thus, the obviousness-type double patenting was considered but not applied. The structural difference between the species of co-pending applications 18665797 and 18749828 means that the two are patentably distinct.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNA MOORE whose telephone number is (571)272-9046. The examiner can normally be reached Monday - Friday, 10:00 am to 7:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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