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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1 – 14, and 16) drawn to a compound of formula (I),
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wherein R1-3, L, Z1-4 and X1-2 are defined and the species election of (2‐{5‐fluoro‐1H‐pyrrolo[2,3‐b]pyridin‐3‐yl}ethyl)dimethylamine of structure
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in the reply filed on August 17th, 2026 is acknowledged.
Claims 17, 19 – 21, and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II (a method of treating a disease, disorder or condition by activation of a serotonin receptor), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 17th, 2026. Furthermore, claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected chemical species where R13 is present and is an H or C1-6 alkyl. Moreover, chemical species of the structure
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was rejoined and is examined on the merits. However, all other chemical species remain restricted, and the election of species required in the restriction requirement mailed May 22nd, 2026 is maintained. Additionally, the restriction between Groups I and Group II is maintained.
Hence claims 1 – 7, 9 – 14, and 16 are being examined on the merits herein.
Claim Objections
Claim 3 is objected to because of the following informalities: poor image quality of the table. The quality of the table image in claim 3 might not translate over well in printing. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 6, 7, and 9 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.
Claim 6 recites the compound of claim 1, or a pharmaceutically acceptable salt, solvate, tautomer, N-oxide, stereoisomer, metabolite, polymorph or prodrug thereof, wherein R6 (if present) is H. Regarding claim 6, the use of parenthesis in the claim renders the claim indefinite because it is unclear whether the recitation within the parenthesis is a definition or preferred embodiment. Moreover, does the compound of require R6 to be present? Do compounds that have R6 but where R6 does not equal H meet the limitation for the claim? As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of whether R6 is required and whether R6 is required to be H. Therefore, given the uncertainty around the terms within the parenthesis claim 6 is rejected under 35 U.S.C. 112(b).
Claim 7 recites the compound of claim 1, or a pharmaceutically acceptable salt, solvate, tautomer, N-oxide, stereoisomer, metabolite, polymorph or prodrug thereof, wherein one of R8 and R9 (if present) is selected from halogen, OR13, N(R13)2, SR13, C1-6 alkyl and C1-6 haloalkyl, the other (if present) is hydrogen. Regarding claim 7, the use of parenthesis in the claim renders the claim indefinite because it is unclear whether the recitation within the parenthesis is a definition or preferred embodiment. Moreover, does the compound of claim 7 require either R8 and/or R9 to be present? Do compounds that have R8 and/or R9 but where R8 and/or R9 are not H meet the limitation for the claim? As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of whether R8 and/or R9 is required and whether R8 and/or R9 are required to be H. Therefore, given the uncertainty around the terms within the parenthesis claim 7 is rejected under 35 U.S.C. 112(b). Additionally, claim 9 is included in the rejection for being dependent on claim 7, and failing to address the deficiency.
Claim 9 recites the compound of claim 7, or a pharmaceutically acceptable salt, solvate, tautomer, N-oxide, stereoisomer, metabolite, polymorph or prodrug thereof, wherein one of R7, R8 and R11 (if present) hydrogen. Regarding claim9, the use of parenthesis in the claim renders the claim indefinite because it is unclear whether the recitation within the parenthesis is a definition or preferred embodiment. Moreover, does the compound of require either R7, R8 and R11 (if present) to be present? Do compounds that have R8 and/or R9 but where R8 and/or R9 does not equal H meet the limitation for the claim? As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of whether R8 and/or R9 is required and whether R8 and/or R9 are required to be H. Therefore, given the uncertainty around the terms within the parenthesis claim 7 is rejected under 35 U.S.C. 112(b). Additionally, claim 9 is included in the rejection for being dependent on claim 7, and failing to address the deficiency.
Claim Rejections - 35 USC § 112
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 14 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 14 recites the compound of claim 1 selected from a series of compounds which include compounds P-7 of structure
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, P-8 of structure
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, and P-9 of structure
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. However, claim 1 recites a compound of formula (I),
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with the proviso wherein the compound of formula (I) is not one of the following:
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which includes the three of the structures from claim 14. Thus dependent claim 14 recites the inclusion of compound species that independent claim 1, from which claim 14 depends, specifically excludes. As a conseuqnce dependent claim 14 fails to further limit independent claim 1. 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
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.
Claims 1 – 6, 10 – 13, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by European Patent Application EP 0870768 A1 to Nagel (Nigel’768; cited on the ISR form as EP 08870768 A1).
Regarding claims 1 – 6, 10 – 13, and 16, Nigel’768 teach azaindole amine compounds and their use in treating addictive disorders, neurological and mental disorders. See page 3 lines 5 – 9. Specifically, Nigel’768 teach species compound example 4, [2-(6-Chloro-1H-pyrrolo[2,3-b]pyridin-3-yl)-ethyl]-dimethyl-amine, of structure
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which is embraced by general formula (I) where L = CH2; R1 = R2 = CH3; R3 = H; X1 = NR6 where R6 = H; X2 = CR7 where R7 = H; Z1 = CR8 where R8 = H; Z2 = CR9 where R9 = H; Z3 = CR10 where R10 = Cl; and Z4 = N. See page 12 lines 5 – 15. See claim 1 limitation for a compound where L = C1 alkylene; R1 = R2 = C1 alkyl; R3 = H; X1 = NR6 where R6 = H; X2 = CR7 where R7 = H; Z1 = CR8 where R8 = H; Z2 = CR9 where R9 = H; Z3 = CR10 where R10 = halogen; and Z4 = N. See claim 2 limitation for a compound where one of X1 = heteroatom. See claim 3 limitation for a compound where X1, X2, Z1, Z2, Z3, and Z4 are defined by embodiment 2 where X1 = NR6, X2 = CR7, Z1 = CR8, Z2 = CR9, Z3 = CR10, and Z4 = N. See claim 4 limitations for a compound where X1, X2, Z1, Z2, Z3, and Z4 are defined by embodiment 2. See claim 5 limitation for a compound where X1 = NR6. See claim 6 limitation for a compound where R6 is present and is a H. See claim 10 limitation for a compound where R1 and R2 are each independently selected from C1-4 alkyl. See claim 11 limitation for a compound where R1 and R2 together with the N which they are attached to form
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. See claim 12 limitation for a compound wherein R3 = H. See claim 13 limitation for a compound where L = methylene.
Furthermore, Nigel’768 teach that the compounds of the disclosure which include compound example 4 was assayed in standard assay buffer was 50 mM Tris HCI, 120 mM NaCl, 5 mM KCI, 2 mM MgCl2, 2 mM CaCl2 and has a pH of 7.4 at room temperature to determine the L-[3H] Nicotine binding using whole brain lysates harvested from male Sprague-Dawley rats. See page 10 lines 46, 56 – 57 and page 11 lines 1 – 3. Moreover, Nigel’768 teach that the compounds of the disclosure which include compound example 4, can be formulated into tablets containing various excipients such as microcrystalline cellulose, sodium citrate, calcium carbonate, dicalcium phosphate and glycine may be employed along with various disintegrants such as starch (preferably com, potato or tapioca starch), alginic acid and certain complex silicates, together with granulation binders like polyvinylpyrrolidone, sucrose, gelatin and acacia. See page 10 lines 16 – 19. See claim 16 limitation for pharmaceutical composition comprising a compound of claim 1 and a pharmaceutically acceptable excipient.
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 for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over European Patent Application EP 0870768 A1 to Nagel (Nigel’768; cited on the ISR form as EP 08870768 A1) as applied to claims 1 – 6, 10 – 13, and 16 above.
The teachings of Nigel’768 as they relate to claim 1, from which claims 7 and 9 depend, are given previously in this office action and are fully incorporated here.
However, Nigel’768 fails to teach a compound where if present one of R8 or R9 is a halogen, and the other is a H. See claim 7 limitation. Moreover, Nigel’768 fails to teach a compound where if present R7, R10, or R11 are H. See claim 9 limitation.
Nevertheless, as taught above Nigel’768 teach species compound example 4, [2-(6-Chloro-1H-pyrrolo[2,3-b]pyridin-3-yl)-ethyl]-dimethyl-amine, of structure
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which is embraced by general formula (I) where L = CH2; R1 = R2 = CH3; R3 = H; X1 = NR6 where R6 = H; X2 = CR7 where R7 = H; Z1 = CR8 where R8 = H; Z2 = CR9 where R9 = H; Z3 = CR10 where R10 = Cl; and Z4 = N. See page 12 lines 5 – 15. Thus the only difference between prior art example 4 and a compound where if present R8 or R9 is a halogen and the other is a H as recited in claim 7 or a compound where if present R7, R10, or R11 are H is the position of the Cl atom around the pyrrolo[2,3-b]pyridin ring. Thus if the Cl atom is in the R8 position then R9-11 would be H atoms. See claims 7 and 9 limitation. Given that the only difference between the prior art compound example 4 and compound species of claims 7 and 9 is the location of the Cl atom, these compounds are positional isomers of each other. Therefore, compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) 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). See MPEP 2144.09 (II).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over European Patent Application EP 0870768 A1 to Nagel (Nigel’768; cited on the ISR form as EP 08870768 A1) as applied to claims 1 – 6, 10 – 13, and 16 above, in view of Ali et. al. (2014) Input of Isosteric and Bioisosteric Approach in Drug Design, J. Chem. Soc. Pak., 36, page 150-169.
The teachings of Nigel’768 as they relate to claim 1, from which claim 14 depends, are given previously in this office action and are fully incorporated here.
However, Nigel’768 fails to teach the selected compound is
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where Z2 = CR9 where R9 = F and Z3 = CR10 where R10 = H. See claim 14 limitation.
Nevertheless, as taught above Nigel’768 teach species compound example 4, [2-(6-Chloro-1H-pyrrolo[2,3-b]pyridin-3-yl)-ethyl]-dimethyl-amine, of structure
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which is embraced by general formula (I) where L = CH2; R1 = R2 = CH3; R3 = H; X1 = NR6 where R6 = H; X2 = CR7 where R7 = H; Z1 = CR8 where R8 = H; Z2 = CR9 where R9 = H; Z3 = CR10 where R10 = Cl; and Z4 = N. See page 12 lines 5 – 15. Thus one of the only differences between prior art example 4 and compound
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is the position of the Cl atom around the pyrrolo[2,3-b]pyridin ring. Thus if the Cl atom is in the R9 position then R10 would be H atoms. See claim 14 limitation. Given that one of the only differences between the prior art compound example 4 and compound species of claim 14 is the location of the Cl atom, these compounds are positional isomers of each other. Therefore, compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) 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). See MPEP 2144.09 (II).
However, Nigel’768 fails to teach the selected compound is
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where Z2 = CR9 where R9 = F. See claim 14 limitation.
Nevertheless, Ali et. al. teach isosterism or bioisosterism is one of the approaches most frequently used in the design of new molecules. See page 150 column 1 paragraph 1. Furthermore, Ali et. al. teach that bioisosterism is a well-established technique in modern drug design, extensively studied for modification of drug target selectivity, bioactivity, efficacy, potency, membrane permeability, biotransformation pathways and toxicity profile. See page 150 column 1 paragraph 1. Moreover, Ali et. al. teach that the isosteric replacement approach is a practical and, possibly, better substitutes to recent lead optimization techniques. See page 150 column 1 paragraph 1. Specifically, Ali et. al. teach F and Cl as classical monovalent bioisosteres. See page 155 Figure 3. Thus Ali et. al. suggest that the substitution of F for Cl atom is well known in the prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify prior art compound example 4 of Nigel’768, that is to position the Cl atom in the R9 position in view of Ali et. al. that is to replace the prior art Cl atom with an F atom. One of ordinary skill in the art would have been motivated to make this modification to modify a drug target selectivity, bioactivity, efficacy, potency, membrane permeability, biotransformation pathways and toxicity profile. One or ordinary skill in the art would have had a reason expectation of success because both Cl and F atoms are known in the prior art to be classical monovalent equivalents.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 7, 9 – 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 12428380 to Banister et. al. (Banister’380).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the invention of Banister’380 and the examined application direct to overlapping compound species. The genus of compounds recited by the reference claims of Banister’380 overlaps with the subgenus of compounds recited in examined claims 1 – 7, 9 – 14, and 16. In particular, Banister’380 recites compound species A-69 of structure
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. See reference claim 1. See examined claims examined claims 1 – 7, 9 – 14, and 16 where examined L = CH2; examined R1 = R2 = CH3; examined R3 = H; examined X1 = NR6 where R6 = H; examined X2 = N; examined Z1 = CR8 where R8 = F; examined Z2 = CR9 where R9 = F; examined Z3 = CR10 where R10 = H; and examined Z4 = CR11 where R11 = H.
Claims 1 – 7, 9 – 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 12415804 to Banister et. al. (Banister’804).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the invention of Banister’804 and the examined application direct to overlapping compound species. The genus of compounds recited by the reference claims of Banister’804 overlaps with the subgenus of compounds recited in examined claims 1 – 7, 9 – 14, and 16. In particular, Banister’804 recites compound species S27 of structure
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. See reference claim 1. See examined claims examined claims 1 – 7, 9 – 14, and 16 where examined L = CH2; examined R1 = R2 = H; examined R3 = CH3; examined X1 = NR6 where R6 = H; examined X2 = CR7 where R7 = H; examined Z1 = CR8 where R8 = H; examined Z2 = CR9 where R9 = F; examined Z3 = CR10 where R10 = H; and examined Z4 = N.
Claims 1 – 7, 9 – 14, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 39, 40, 41, 42, 43 – 46, and 47 of copending Application No. 18/723719 to Banister et. al. (reference application; Banister’719).
Although the claims at issue are not identical, they are not patentably distinct from each other because both copending Banister’719 and the examined application direct to compounds of Formula (I). The genus of compounds recited by the reference claims of Banister’719 overlaps with the subgenus of compounds recited in examined claims 1 – 7, 9 – 14, and 16. In particular, Banister’719 recites a compound of Formula (I)
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where are reference R1-11 and reference L are defined. See reference claims 1, 39, 40, 41, 42, 43 – 46, and 47. See examined claims examined claims 1 – 7, 9 – 14, and 16 where examined Z1 = CR8, examined Z2 = CR9, examined Z3 = CR10, examined Z4 = CR11, and examined X2 = CR7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 7, 9 – 14, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5-7, 9 – 19, and 21 of copending Application No. 18/723836 to Banister et. al. (reference application; Banister’836).
Although the claims at issue are not identical, they are not patentably distinct from each other because both copending Banister’836 and the examined application direct to compounds of formula (I)
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. The genus of compounds recited by the reference claims of Banister’836 overlaps with the subgenus of compounds recited in examined claims 1 – 7, 9 – 14, and 16. In particular, Banister’836 recites a compound of Formula (I)
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where are reference R1-11 and reference L are defined. See reference claims 1, 2, 3, 4, 5-7, 9 – 19, and 21. See examined claims examined claims 1 – 7, 9 – 14, and 16 where examined Z1 = CR8, examined Z2 = CR9, examined Z3 = CR10, examined Z4 = CR11, and examined X2 = CR7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 7, 9 – 14, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 15 of copending Application No. 19290130 to Banister et. al. (reference application; Banister’130).
Although the claims at issue are not identical, they are not patentably distinct from each other because both copending Banister’130 and the examined application direct to compounds of Formula (I)
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. The genus of compounds recited by the reference claims of Banister’130 overlaps with the subgenus of compounds recited in examined claims 1 – 7, 9 – 14, and 16. In particular, Banister’130 recites a compound of Formula (I)
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where are R1-3 and 6, L, and Z1-4 defined. See reference claims 1 – 15. See examined claims examined claims 1 – 7, 9 – 14, and 16.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 7, 9 – 14, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 17 are of copending Application No. 19/294979 to Banister et. al. (reference application; Banister’979).
Although the claims at issue are not identical, they are not patentably distinct from each other because both copending Banister’979 and the examined application direct to compounds of Formula (I)
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. The genus of compounds recited by the reference claims of Banister’979 overlaps with the subgenus of compounds recited in examined claims 1 – 7, 9 – 14, and 16. In particular, Banister’979 recites a compound of Formula (I)
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where R1-10 are defined. See reference claims 1 – 17. See examined claims examined claims 1 – 7, 9 – 14, and 16 where examined Z1 = CR8, examined Z2 = CR9, examined Z3 = CR10, examined Z4 = N, and examined X2 = CR7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1 – 7, 9 – 14, and 16 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAWANNA S WHITE whose telephone number is (703)756-4687. The examiner can normally be reached 7:00 am - 5:00 pm [EST] M - Th.
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/DAWANNA SHAR-DAY WHITE/Examiner, Art Unit 1627
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