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 1, 2, 5-7, 9, 12, 21, 27, 30, 33, 34, 36, 37, 39, 40, 42-45 are currently pending in the instant application. Applicants have amended claims 1, 2, 5-7, 9, 12, 21, 27, 30, 33, 36, 37, 39, 40, 42-45 and canceled claims 3-4, 8, 10-11, 13-20, 22-26, 28-29, 31-32,35, 38, 41 and 46-50 in amendment filed on August 6, 2024. Claims 1, 43 and 44 are rejected and claims 2, 5-7, 9, 12, 21, 27, 30, 33, 34, 36, 37, 39, 40, 42 and 45 are objected in this Office Action.
I. Priority
The instant application is a 371 of PCT/US2023/062095, filed on February 7, 2023 which claims benefit of US Provisional Applications 63/402,166, filed on August 30, 2022 and 63/307,509, filed on February 7, 2022.
II. Information Disclosure Statement
The information disclosure statements (IDS) submitted on August 6, 2024, August 29, 2024, March 21, 2025 and November 26, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
III. Rejections
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 1 and 43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohashi, et al. (US 20120119171 A1). The instant invention claims
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The Ohashi, et al. reference teaches the compound
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148
368
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(See page 9, second to last compound on right) wherein A and B are a tricyclic hetaryl ring substituted with butyl on the nitrogen atom and dimethyl at the 3-position; R1 and R2 form a cyclohexenyl ring and all other variables are hydrogen. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claims 1 and 43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada, et al. (US 2020/0363576 A1). The instant invention claims
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The Yamada, et al. reference teaches the compound
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188
420
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(See page 25, paragraph 0269) wherein A and B are a bicyclic hetaryl ring substituted with ethyl on the nitrogen atom; R1 and R2 form a cyclohexenyl ring and all other variables are hydrogen. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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.
Claim 44 is 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 44 contains the limitation “A method of delivering a compound or composition of claim 1”. However, claim 1 is only drawn to “a compound” and not a “composition” so it is unclear what composition Applicants are referring to in this limitation. This limitation lacks antecedent basis. Applicants are suggested to delete the phrases “or a composition” in claim 44 to overcome the rejection.
IV. Objections
Dependent Claim Objections
Dependent Claims 2, 5-7, 9, 12, 21, 27, 30, 33, 34, 36, 37, 39, 40, 42, 44 and 45 are also objected to as being dependent upon a rejected based claim. To overcome this objection, Applicant should rewrite said claims in an independent form and include the limitations of the base claim and any intervening claim.
V. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHAWQUIA JACKSON/ Primary Examiner, Art Unit 1626
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