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 .
Status of the Claims
Claims 1-7, 10, 12, 15, 18, 20-21, 23, 29-32, 34, and 43 are pending.
Claims 10, 12, 15, 20, 23, 29, 30, 34 and 43 are withdrawn.
Priority
Applicant’s claim for benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. This application is a national stage entry of and claims priority to PCT/CA2022/051228 filed on 8/11/2022 and further claims priority to PRO application numbers 63/347,835 and 63/321,440, filed 6/01/2022 and 03/18/2022, respectively.
Information Disclosure Statement
All references from IDS(s) received on 6/18/2025, 6/27/2025, 7/31/2025, 12/03/2025, 12/30/2025, 12/31/2025, 3/9/2026, 5/8/2026, and 6/29/2026 have been considered unless marked with a strikethrough.
Elections/Restrictions
Applicant’s election of Group I without traverse in the reply filed on 8/25/2026 is acknowledged.
Claims 34 and 43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as
being drawn to a nonelected method of use, there being no allowable generic or linking claim.
Applicant’s election of species of the Compound C(I), shown below, elected without traverse in the reply filed on 8/25/2026 is acknowledged.
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Claims 10, 12, 15, 20, 23, 29, and 30 are withdrawn as not reading on the elected specie.
*NOTE: Although claim 29 is withdrawn, if it were to be examined it would be rejected under 112(b) for lack of antecedent basis as it seems to have a typo in the claim dependency. Examiner suggests amending this claim in the Applicant’s response.
Claims 1-7, 18, 21, and 31-32 will be examined on their merits.
No anticipatory art was found of the elected species, so the Examiner expanded the species
pursuant to MPEP 803.02. The expanded species is a compound where instant R3 and R4a is an alkyl group, where one of the carbons in -R4a may be substituted with an -O-, as required by instant claims 1, 2, and 5. The expanded specie reads on claims 1, 2, 5, and 32.
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Anticipatory art was found on the expanded species, see 102 rejection below. Further, the elected species is rejected through an obviousness-type 103 rejection.
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 (i.e., changing from AIA to pre-AIA ) 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, 2, 5, and 32 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by Grill, M. (WO2022038299A1; published 2/2022; cited in IDS filed 6/18/2025; “Grill”).
This rejection applies to the expanded specie.
Grill teaches an overlapping genus structure with the instant claims.
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(Claim 1)
Grill teaches an explicit example of the expanded species (Claim 15) as well as a pharmaceutical composition of the compound (Claim 17).
Therefore, the limitations of claims 1, 2, 5, and 32 are anticipated by Grill.
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 (i.e., changing from AIA to pre-AIA ) 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 1-7, 18, 21, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Albert, H. et al. (US3078214A (1963); cited in IDS filed 6/18/2025; “Albert”) in further view of Jiang, S. et al. (Sci Rep 6, 34750 (2016); “Jiang”).
This rejection applies to the elected specie.
Albert teaches an overlapping genus structure with the instant claims with compounds for use in treating mental disturbances of neurotic and psychic origin, as required by the instant claims.
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(Albert, Claim 1)
Albert teaches an explicit structural example with almost the same structure as the elected specie, except the phenyl is not substituted with a bromine.
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(Albert, Claim 2)
Albert fails to teach substitution of the compound with a halogen group.
However, Jiang teaches halogen ligands are widely used in pharmacology. Jiang teaches that “the halogen bond, analogous to the hydrogen bond, is a highly directional and specific non-covalent interaction. This bond has attracted great attention in pharmacology because halogen bonds, as orthogonal molecular interactions to hydrogen bonds, can be introduced to improve ligand affinities without disrupting other structurally important interactions, and thus can be exploited for the rational design of halogenated ligands as inhibitors and drugs” (Introduction, para. 1).
Although Jiang does not explicitly teach the compounds of the instant claims, it would be obvious to a person skilled in the art to extract a known drug for treating mental health conditions and add a halogen substituent. A person skilled in the art would be motivated to do so because halogen bonds are widely used in medicinal chemistry in place of hydrogen bonds to improve ligand affinities of drugs.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down inGraham.
Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement
to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a
reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same
field or a different one based on design incentives or other market forces if the variations are
predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of
ordinary skill to modify the prior art reference or to combine prior art reference teachings to
arrive at the claimed invention.
Applying KSR example rationale (B), it would have been prima facie obvious to substitute the hydrogens in structure taught by Albert with a halogen, such as bromine, because a person skilled in the art would be motivated to do so because halogen bonds are widely used in medicinal chemistry in place of hydrogen bonds to improve ligand affinities of drugs, as taught by Jiang. Therefore, claims 1-7, 18, 21, and 31-32 would be obvious to a skilled person in the art at the time.
Conclusion
Claims 1-7, 18, 21, and 31-32 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLA MARIA BAUER whose telephone number is (703)756-1269. The examiner can normally be reached Monday-Friday 7:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clint 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.
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/N.M.B./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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