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 a preliminary amendment filed on Oct. 18, 2024, the applicants have canceled claims 1-4, 6, 8, 11-13, 16, 18-20, 25, 27, 31-32, 35, 37-38 and 41-44 and furthermore, have amended claims 5, 7, 9, 14-15, 21-22, 28-30, 33-34 and 39-40.
Claims 5, 7, 9-10, 14-15, 17, 21-24, 26, 28-30, 33-34, 36 and 39-40 are pending in the application.
Claim Rejections - 35 USC § 102
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 5, 7, 9-10, 14-15, 17, 21-23, 28, 33, 36 and 39-40 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Jerussi (U.S. Patent 7,189,715).
Jerussi discloses compositions comprising Zopiclone derivatives for treating various disease including anxiety and pain. The compounds disclosed in col. 1 (see lines 20-30), col. 6-9, 15 and 33 by Jerussi anticipate the instant compounds when variables R1 and R2 together form substituted/unsubstituted 6-membered heterocycle, variable Z represents O, variable Y is H and variable A represents substituted heteroaryl group in the instant compounds of formula (II).
Claims 5, 7, 9-10, 14-15, 17, 21-23, 28, 33, 36 and 39-40 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Carlson (Eur. J. Pharmacol.).
Carlson discloses sedative and anxiolytic effects of Zopiclone’s enantiomers and metabolite, desmethylzopiclone. The anxiolytic effects of Zopiclone and its enantiomers disclosed in figures 2-4 (see pages 184-186) by Carlson anticipate the instant compounds when variables R1 and R2 together form substituted/unsubstituted 6-membered heterocycle, variable Z represents O, variable Y is H and variable A represents substituted heteroaryl group in the instant compounds of formula (II).
Allowable Subject Matter
Claims 24, 26, 29-30 and 34 are 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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621
Prosecution Insights