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 .
Response to Amendment
The RCE containing newly amended claims 1, 2, 4-6, and 8 filed 2026 March 27 is examined on the merits. The non-statutory double patenting rejection is overcome because a terminal disclaimer against US 10947199 was filed 2025 November 14 and approved 2025 November 19. The claim objections and 35 U.S.C. 112 (b) rejection of the 2026 January 9 final rejection are overcome because compounds 2, 3, 7, 9, 10, 12, and 13 are now legible. The 35 U.S.C. 102 rejections of the same final rejection are maintained because the effective filing date remains 2021 January 21, see the priority discussion below. Newly amended claims 1, 2, 4-6, and 8 are examined on the merits.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/481562, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
In newly amended claim 1, compounds 2-4 and 8, shown below, have support to application 16/481562.
PNG
media_image1.png
116
196
media_image1.png
Greyscale
Compound 2 of examined claim 1
PNG
media_image2.png
150
252
media_image2.png
Greyscale
16 / 481562 paragraph [18]
PNG
media_image3.png
108
196
media_image3.png
Greyscale
Compound 3 of examined claim 1
PNG
media_image4.png
140
256
media_image4.png
Greyscale
16 / 481562 paragraph [18]
PNG
media_image5.png
142
176
media_image5.png
Greyscale
Compound 4 of examined claim 1
PNG
media_image6.png
192
230
media_image6.png
Greyscale
16 / 481562 paragraph [18]
PNG
media_image7.png
130
196
media_image7.png
Greyscale
Compound 8 of examined claim 1
PNG
media_image8.png
164
244
media_image8.png
Greyscale
16 / 481562 paragraph [18]
None of the other compounds are disclosed implicitly or explicitly due to a lack of guidance leading to the other claimed compound of examined claim 1. The examined application is a continuation-in-part of parent application 16 / 481562. When the possibilities of variable A in 16 / 481562 are considered, variable A is a laundry list of groups that can be present and there are no blaze marks leading to the other compounds recited in amended claim 1 of 17 / 154306. Variable A represents six diverse groups, (i)-(v), selected from the following groups: an optionally substituted phenyl; an optionally substituted naphthyl; an optionally substituted 5 or 6 membered monocyclic heteroaryl; an optionally 8 to 10 membered bicyclic heteroallyl group; group R1; and group R2. Due to this lack of guidance in application 16 / 481562 does not provide support for all of the compounds recited in amended claim 1.
Under this rationale, the effective filing date of the examined application remains 2021 January 21.
Claim Objections
Claims 1, 2, 4-6, and 8 are objected to because of the following informalities.
In claim 1, chemical structures 1, 4-6, 8, and 11 are gray scale and are of grainy quality. In these images it is difficult to tell what type of bond connects a spiro ring to a phenyl ring and/or the type of bond between C and O in the amide. Even though it is assumed to be a double bond, the image is still grainy and is not legible. These images should be recited in a darker color so they are more legible. An example of how to improve the quality of image is shown below.
Present Image
PNG
media_image9.png
98
188
media_image9.png
Greyscale
Chemical Structure 1
Better Quality Image
PNG
media_image10.png
346
696
media_image10.png
Greyscale
PNG
media_image11.png
138
172
media_image11.png
Greyscale
Chemical Structure 4
PNG
media_image12.png
538
727
media_image12.png
Greyscale
PNG
media_image13.png
126
184
media_image13.png
Greyscale
Chemical Structure 5
PNG
media_image14.png
437
634
media_image14.png
Greyscale
PNG
media_image15.png
136
168
media_image15.png
Greyscale
Chemical Structure 6
PNG
media_image16.png
437
510
media_image16.png
Greyscale
PNG
media_image17.png
132
198
media_image17.png
Greyscale
Chemical Structure 8
PNG
media_image18.png
437
647
media_image18.png
Greyscale
PNG
media_image19.png
124
216
media_image19.png
Greyscale
Chemical Structure 11
PNG
media_image20.png
406
696
media_image20.png
Greyscale
Appropriate correction is required.
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.
Claims 1, 2, 4-6, and 8 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 chemical structures 1, 4-6, 8, and 11 are unclear because their image quality is poor. In each of these images, at least one portion cannot be determined. As discussed in the claim objections section, each structure has at least one unclear portion. The following table lists the portion(s).
Chemical Structure #
Unclear Portion(s)
Chemical Structure 1
Bonds between spiro and phenylene rings
Chemical Structure 4
Bonds between spiro and phenylene rings; bond between C and O of amide group
Chemical Structure 5
Bonds between spiro and phenylene rings; bond between C and O of amide group
Chemical Structure 6
Bonds between spiro and phenylene rings; bond between C and O of amide group
Chemical Structure 8
Bonds between spiro and phenylene rings; bond between C and O of amide group
Chemical Structure 11
Bonds between spiro and phenylene rings; bond between C and O of amide group
Due to these images being illegible, the metes and bounds of these compounds are not clear and is the rationale for the effective filing date remaining at 2021 January 21.
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.
Claim(s) 1, 2, 4-6, and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CHANG (US 20190365726, published 5 December 2019, cited in IDS) describes several compounds (pages 2-4, paragraph [029]).
PNG
media_image21.png
154
278
media_image21.png
Greyscale
PNG
media_image22.png
232
276
media_image22.png
Greyscale
PNG
media_image23.png
148
268
media_image23.png
Greyscale
PNG
media_image24.png
168
280
media_image24.png
Greyscale
These compounds inhibit proteasome in vivo (pages 4-5, example 1, paragraph [0030]; page 5, example 6, paragraph [0035]; page 6, examples 10-12, paragraphs [0039] to [0041]. Methods of treatments are described (pages 2, paragraphs [0027] and [0028]; claims 1,2, second claim 3, and claims 4-7).
Response to Amendment / Arguments
This rejection is maintained because the chain of priority does not provide support for all of the compounds present in examined claim 1.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by RODEN (WO 2021/236654, published 2021 November 25, effectively filed date of 2020 May 18 based on provisional application 63/026268). Roden describes Up284 (figure 2). In Up284, the following definitions apply: (n) and (m) are each ethylene; R3 is H; (A1, A2) and (A3,A4) are (p-CN-phenyl, H) and (H, p-CN-phenyl), respectively.
PNG
media_image25.png
278
386
media_image25.png
Greyscale
Provisional application 63/036368 recites the same figure 2.
PNG
media_image26.png
200
360
media_image26.png
Greyscale
Response to Amendment / Arguments
This rejection is maintained because the chain of priority does not provide support for all of the compounds present in examined claim 1.
Conclusion
Claims 1, 2, 4-6, and 8 are not allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
Prosecution Insights