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
This Office Action is responsive to the Response to Election/Restriction filed 07/17/2026.
The preliminary amendment filed 03/14/2025, amended claim 19, cancelled claims 18, 20 and 23-31.
Claims 1-17, 19 and 21-22 are pending.
Priority
This application claims the following priority:
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Election/Restrictions
Applicant’s election without traverse of Group I, and the Formula I species,
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, in the reply filed on 07/17/2026, is acknowledged.
Claims 2, 4, 6-17, and 21-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and subject matter, there being no allowable generic or linking claim.
Claims 1, 3, 5, and 19 are examined on the merits herein.
Claim Rejections - 35 USC § 112(b)
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, 3, 5, and 19 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.
-In claim 1, in the definition of R1, the phrase “wherein groups except hydrogen, halogen, cyano, and nitro are optionally substituted with. . .,” renders the claim indefinite. “Hydrogen” is not a Markush membered recited in the definition of R1. As such, it is not clear if “hydrogen” should be recited as a Markush member of R1 or if the recitation of “hydrogen” within the phrase “wherein groups except hydrogen, halogen, cyano, and nitro are optionally substituted with. . .,” is a typo and it should be deleted.
In view of compact prosecution, for the purpose of applying prior art, the recitation of “hydrogen” is interpreted as a typo.
All other claims not specifically recited are rejected for depending from an indefinite claim and failing to cure the deficiency.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5 and 19 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by WO2008/011045 to Cai (published 2008, IDS of 10/10/2025).
Regarding claims 1, 3, and 5 Cai teaches:
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(pg. 142, #24; pg. 171, claim 15; pg. 185, claim 29), which meets the limitations of instant Formula I when:
X is S
R1 is C1alkoxy, i.e. -OCH3
R2 is a C5-heterocycloalkyl, i.e., pyrrolidine
m and n are 1
L1 and L2 are a bond (absent).
"A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus. See MPEP 2131.02.
Regarding claim 19, Cai teaches a pharmaceutical composition comprising its compounds and a pharmaceutically acceptable carrier (pg. 190, claim 30).
Note: The below rejection is applied to meet the limitations of the elected species,
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.
Claim Rejections - 35 USC § 103
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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over
WO2008/011045 to Cai (published 2008, IDS of 10/10/2025).
Cai is applied as discussed above and incorporated herein.
Cai teaches
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, which differs from that of the elected species in that it teaches a methoxy at R1 and not an ethoxy.
Cai teaches general compound:
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(pg. 167, claim 1), wherein Q2 is an aryl substituted with C1-10 alkoxy (pg. 168, claim 3, 5, 6).
Cai exemplifies compounds wherein the instant R1 is ethoxy, (pg. 141, 19; pg. 127, H2, G2; pg. 119, F1, E1; pg. 118, C1, D1).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute the methoxy in
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with ethoxy, to arrive at the elected species. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-Cai teaches that its Q2 can be substituted with C1-10 alkoxy,
-Cai exemplifies six compounds, wherein Q2 is substituted with an ethoxy, and
-Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) 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), MPEP 2144.09.
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at a structurally and functionally similar compound.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN WELLS whose telephone number is (571)272-7316. The examiner can normally be reached M-F 7:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James (Jim) Alstrum-Acevedo can be reached on 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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/LAUREN WELLS/Examiner, Art Unit 1622
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