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 .
Claim Status
Claims 1-33 are pending. Claims 1-4, 7-16 and 18-33 are rejected. Claims 5-6 and 17 are objected to.
Response to Amendment
It is noted that the original claims were numbered as claims 1-24 whereas the preliminary amendment dated July 29th,2024 has changed the claim numbers for those that were originally filed as claims 21-24 and added new claims within the claim set using claim numbers that were previously assigned. This numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented. Misnumbered claims 21-32 have now been renumbered as 21-33 as shown in the OA appendix.
Information Disclosure Statement
All references within the information disclosure statement have considered by the examiner except those where lined through. Entries 16 and 50 of non-patent literature have not been considered as the copies filed are illegible:
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Claim Objections
Claims 1, 8-9 and 17 are objected to because of the following informalities:
Claim 1 defines variables p, p3, y and z within parentheses (pages 6-8, definitions within variables R2, R3, Z and Z1). The definitions should not be presented as parenthetical expressions.
Likewise, claim 8-9 define variables y and z within parentheses (pages 12-14, definitions within variables Z and Z1). Each of these definitions should be written without the parentheses.
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 1-4, 7-16 and 18-33 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.
Regarding claim 1 (page 6, line 6), the phrase "for example" or “e.g.” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2-4, 7-16 and 18-33 are rejected for failing to obviate the indefiniteness of claim 1.
Closest Prior Art
The closest prior art is WO 2022/023772 A1 by McCarthy et al. cited in the IDS filed August 29th, 2025 which shares a common joint inventor with the instant application. McCarthy et al. teach adenosine antagonists of the following genus (page 11):
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The prior art compounds differ from compounds of instant formula I by having a 4-pyridyl ring corresponding to instant variable R1 where the instant claims only provide for 3-pyridyl. McCarthy et al. do not teach the adenosine antagonists in a manner that would motivate a person of ordinary skill to modify the position of the pyridine ring and produce a compound embraced by the instant claims.
The following compound of McCarthy et al. is the closest analogous compound to ones of claim 17 (page 141):
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Even so, the prior art compound differs from the following instant compounds by having a 4-pyridyl ring instead of 3-pyridyl or pyrazinyl and by the presence of additional substituents:
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The referenced compounds are the last two compounds on page 185 of instant claim 17. McCarthy et al. provide no motivation or guidance for modifying the prior art compound in a manner that would result in either of the instant compounds.
Another relevant prior art reference is WO03039451A2 by Tsutsumi et al. cited in the IDS filed August 29th, 2025. Tsutsumi et al. disclose the following adenosine antagonists as Examples 32, 52, and 54, respectively (pages 77 and 85-86):
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Each of the compounds differs from compounds of formula I by the absence of a cyano substituent on the phenyl ring and by having a pyridazine ring other than the following ring provided for as R1:
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For the reasons discussed above, neither the teachings of McCarthy et al. nor Tsutsumi et al. anticipate or render obvious the instant claims.
Allowable Subject Matter
Claims 5 and 6 are objected to as being dependent upon an objected and 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 without the informalities of the objected base claim.
Claim 17 objected to for the informality noted above, but would be allowable if corrected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLI A CHICKS whose telephone number is (571)270-0582. The examiner can normally be reached M-Th 7 a.m.- 5 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H Alstrum-Acevedo can be reached at (571)272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.C./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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