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 .
DETAILED ACTION
Claims 35-57 are pending in the present application file.
Election/Restrictions
Applicant’s election of Group I (claims 35-41; drawn to a pharmaceutical composition comprising a compound of formula II) and a species of formula II of claim 40 without traverse in the reply filed September 14, 2026 is acknowledged by the Examiner.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species is not allowable over the prior art as indicated in the rejection under 35 U.S.C 102.
As the Applicant’s elected species has been found not allowable, the Markush-type claims have been rejected and claims to the nonelected invention held withdrawn from further consideration. Claims 35-36 and 40-41 have been examined to the extent that they embrace and are readable on the elected embodiment and the above identified nonelected species. Claims 35-36 and 40 have been found to be not allowable over the prior art. Claim 41 is 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.
Claims 37-39 and 42-57 are withdrawn from consideration by the Examiner under 37 CFR 1.142(b) as being drawn to a non-elected invention.
Priority
The following continuity data is acknowledged in the present application file:
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677
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Information Disclosure Statement
The Information Disclosure Statement(s) filed July 31, 2024 and January 02, 2026 have been acknowledged by the Examiner. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the Examiner.
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.
Claim(s) 35-36 and 40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1050874-52-6 (which entered STN: September 21, 2008).
CAS Registry No. 1050874-52-6 is directed to 5-[[(5,6,7,8-Tetrahydro-1-naphthalenyl)amino]sulfonyl]-3-thiophenecarboxylic acid, which has the structure shown below.
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CAS Registry No. 1050874-52-6 is embraced by a compound of Formula II wherein,
A is CR’
R’ is H
B is S
D is CR’
R’ is H
E at each instance is C
R1’, R2’ and R3 are each H
R1 and R2 join together to form cycloalkyl.
Regarding instant claim 35, this claim only requires the presence of the compound itself and at least one pharmaceutically acceptable carrier or excipient. The preamble of “pharmaceutical” in claim 35 is considered a non-limited intended use. See MPEP 2111.02(II). The CAS Registry entry includes predicted properties including mass and molar solubilities at varying pH values. MPEP 2131.02 states:
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015)
In this situation, a person having ordinary skill in the art in viewing the properties of the CAS Registry entry would at once envisage a composition with the compound and water, which is a pharmaceutically acceptable excipient.
Allowable Subject Matter
Claim 41 is 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.
Conclusion
Claim(s) 35-36 and 40 are rejected.
Claim 41 is objected to.
Claims 37-39 and 42-57 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUINCY A MCKOY whose telephone number is (703)756-4598. The examiner can normally be reached Monday - Thursday 8:00 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray 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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/QUINCY A. MCKOY/
Patent Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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