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 .
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.
Current Status of 18/862,138
This Office Action is responsive to the amended claims of 23 September 2025.
Claims 1, 3, 5-7, 10-12, 18-22, 24-25, 27-30, and 32 have been examined on the merits. Claims 1, 3, 12, 19, 22, and 25 are original. Claims 5-7, 10-11, 18, 20-21, 24, 27-30, and 32 are currently amended.
Priority
The effective filing date is 4 May 2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 23 September 2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 25 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 25 contains a reference to “the compounds of Table 2”. This reference/limitation renders the metes and bounds of the claim undefined (hence rendering claim 25 indefinite under 35 USC 112(b)). Applicants cannot refer to a Table or Figure within the claims by reference to a table number or figure number within the Specification as the Specification is not examined; however, the claims are examined. Moreover, the Specification could be amended after examination of the claims is ended which could change the scope of the examined invention after prosecution has closed.
This rejection can be rendered moot by either canceling claim 25 or lifting the compounds from Table 2 of the Specification and copying those compounds into claim 25. Note: the latter approach could reveal prior art in the next (Final) Office Action.
Conclusion
Claim 25 is not presently allowable as written.
Claims 1, 3, 5-7, 10-12, 18-22, 24, 27-30, and 32 are presently allowable as written.
There is no known prior art reference that either teaches or anticipates a compound of genus formula I of instant claim 1.
The reference TEMPEST (Tempest, Paul, et al. “Two-step solution-phase synthesis of novel benzimidazoles utilizing a UDC (Ugi/de-Boc/cyclize) strategy.” Tetrahedron Letters. (2001), 42, pp. 4959-4962, provided by Applicants and referenced in Applicant-IDS of 23 September 2025), discloses the compound 13:
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138
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(see Scheme 3 on page 4960), wherein: Z1, Z2, and Z3 are each CH; “n” is 0; R2 is -C(=O)R4 wherein R4 is phenyl (a “C6aryl”) substituted with one R4A, wherein R4A is chlorine (a “halo”); and R1 is an isobutyl (a C4alkyl).
However, the reference TEMPEST compound 13, above, is the compound “4-(2-chlorobenzoyl)-3-isobutyl-3,4-dihydroquinoxalin-2(H)-one” which is expressly disclaimed out of the invention by instant claim 1.
Thus, TEMPEST is not a prior art reference.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S KENYON whose telephone number is (571)270-1567. The examiner can normally be reached Monday-Friday 10a-6p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew D Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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