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 1, claims 1-74, and the species:
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in the reply filed on 7/15/2026 is acknowledged
Claims 1-78 are currently pending.
Claims 75-78 are withdrawn as being drawn to a non-elected invention.
Claims 1-74 are read on elected Group I.
A search of the prior art did not any prior art that taught or suggested the elected species or any of the species claimed in claim 73 or a compound of Formula (I-B) of claim 71. Accordingly, the examiner has expanded the species election to compounds which fall within the scope of a compound of Formula (I) of claim 1 as set forth below.
Accordingly, claims 1, 4-7, 9-11, 13-15 and 74 which read on the elected species and claims 3, 71 and 73 are currently under consideration for prior art purposes.
Claims 2, 8, 12, 16-70 and 72 are withdrawn from consideration as being drawn to non-elected species.
Information Disclosure Statement
The information disclosure statement filed on 12/05/2025 is acknowledged. The information disclosure statement is 42 pages long and cites over 394 reference combined. The applicant has an obligation to call the most pertinent prior art to the attention of the U.S. Patent and Trademark Office in a proper fashion. Burying one reference in one hundred other IDS references is like citing nothing. PENN YAN BOATS, INC. v. SEA LARK BOATS, INC., et. al. 175 USPQ 260 (S.D. Fla. 1972). Golden Valley Microwave Foods, Inc. v. Weaver Popcorn Co. Inc., 24 USPQ2d 1801 (U.S. District Court Northern District of Indiana, July 22, 1992), Molins PLC v. Textron, Inc., 48 F.3d 1172, 1184, 33 USPQ2d 1823 (Fed. Cir. 1995). In the instant case, the Examiner has considered the US Patents, US Publication and Foreign documents which have been translated except where lined through. Regarding the Non-Patent literature, the examiner has considered these to the extent of the title except where lined through.
The information disclosure statements filed on 4/24/2026 and 7/15/2026 are acknowledged and have been considered except where lined through.
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 9, 24-31 and 58-65 are/would be 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 9 depends from claim 6, which limits R5 to a C1-C6 alkyl, recites the limitation that R5 is a hydrogen. As such, there is insufficient antecedent basis for this limitation in the claim since claim 6 limits R5 to a C1-C6 alkyl.
Claim 24-25 depend from claim 21, which limits R6 of claim 1 to a heterocyclyl, recites the limitation wherein R6 is either
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or
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which appear to be an alkyl heterocyclyl e.g., a CH2 group between the N and heterocyclyl. As such, there is insufficient antecedent basis for this limitation in the claim. Claims 58-59 are similar, but depend from claim 37.
Regarding claims 26-31, the claims, which depend from claim 1, recite specific variables for R6 which appear to be inconsistent with the definitions of R6 in claim 1. Claims 60-65 are similar, but depend from claim 37.
Note: While claims 24-31 and 58-65 are not encompassed by the elected species, the Examiner felt it necessary to point out these inconsistencies with Compact Prosecution in mind.
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.
Claim(s) 1, 4-5, 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Registry No: 1784123-42-7 (Entered STN: 2015-06-19).
STN Registry No. 1784123-42-7 has the structure:
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which reads on the instant compound of formula I wherein X is a halogen, R1 and R2 are hydrogen, R3 and R4 are independently hydrogen, R5 is hydrogen and one of R6 or R7 is a hydrogen and the other is an alkyl.
Claim(s) 1, 4, 10-11, 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Registry No: 1784392-45-5 (Entered STN: 2015-06-19).
STN Registry No. 1784392-45-5 has the structure:
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which reads on the instant compound of formula I wherein X is a halogen, R1 and R2 are hydrogen, R3 and R4 come together to form a carbonyl, R5 is hydrogen and one of R6 or R7 is a hydrogen and the other is an alkyl.
Claim(s) 1, 4-5, 9, 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Registry No: 1784406-76-3 (Entered STN: 2015-06-19).
STN Registry No. 1784406-76-3 has the structure:
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102
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which reads on the instant compound of formula I wherein X is a halogen, R1 and R2 are hydrogen, R3 and R4 are each hydrogen, R5 is hydrogen and R6 or R7 are each hydrogen.
Claim(s) 1, 4, 9, 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Registry No: 1892185-63-5 (Entered STN: 2016-04-18).
STN Registry No. 1892185-63-5 has the structure:
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which reads on the instant compound of formula I wherein X is a halogen, R1 and R2 are hydrogen, R3 and R4 come together with the carbon they attached to form a cycloalkyl, R5 is hydrogen and R6 or R7 are each hydrogen.
Claim(s) 1, 4, 9, 10-11 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Registry No: 1782846-88-1 (Entered STN: 2015-06-17).
STN Registry No. 1782846-88-1 has the structure:
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which reads on the instant compound of formula I wherein X is a halogen, R1 and R2 are hydrogen, R3 or R4 is OH, R5 is hydrogen and either R6 or R7 is a hydrogen and the other is an alkyl.
Claim(s) 1, 4-7 and 74 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No 5378708 to Drumm et al. (1995-01-03).
The US patent teaches compounds of the formula
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and compositions containing them (abstract). With regards to the compositions, the US Patent teaches a processes of forming an aqueous composition comprising the compound in combination with water (Example G). With regards to the compounds, the US Patent teaches that the compounds include, but are not limited to, the following compound:
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, wherein
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which reads on the instant compound of formula I wherein X is a halogen, R1 and R2 are hydrogen, R3 or R4 is OH, R5 is methyl and either R6 or R7 is a hydrogen and the other is heterocycyclyl (see table 8, wherein A is CH(Me)CH2, R5 is Me, G is O and R7 is Cl).
Conclusion
The elected species having the structure
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and the compounds recited in claim 71 and claim 73 are free of the prior art and in condition for allowance. The closest prior art is considered to be WO2024/206712A1 to Tactogen (2024-10-03, which claims priority to 2023-03-31) whom teaches the elected species having the structure
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and many other structurally similar compounds to those claimed in claim 73 (see page 69). However, the priority document of WO2024/206712A1 does not provide any example of substitution at the vinyl position, specifically with F, as claimed. In particular, all of the compounds disclosed in the priority document of WO2024/206712A1 do not have any substitution at the vinyl position as claimed and there is no teaching or suggestion to make the substation at the position.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON J FETTEROLF whose telephone number is (571)272-2919. The examiner can normally be reached M-F 6AM-4PM.
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, Jeffrey S Lundgren can be reached at 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BRANDON J. FETTEROLF, PHD
Primary Patent Examiner
Art Unit 1626
/BRANDON J FETTEROLF/Primary Examiner, Art Unit 1626
Prosecution Insights