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
Newly amended claims 1, 2, 4-6, and 8 filed 2025 November 14 are examined on the merits. The claim objections and 35 U.S.C. 112 rejections of 2025 August 14 are overcome because claim 1 now recites discrete organic compounds and cancelled claim 3. The 35 U.S.C. 102 rejections are maintained because the effective filing date of the examined application remains 2021 January 21. 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.
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.
Based on newly amended claim 1 reciting unclear and illegible images, the examined application lacks support to parent application 16 / 481562. Consequently, 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, the language “is at least one selected from the selected from the group consisting of” should be --selected from the group consisting of-- because this language is more succinct and is the same as claim 1 in US 10947199.
Additionally in claim 1, all of the newly added chemical structures are gray scale and are of grainy quality. These images should be recited in a darker color so they are more legible. An example of how to improve the image quality is shown below.
Present Image
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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 several images are unclear because their image quality is poor. In each of these images, at least one portion cannot be determined.
In structure 1, it is the groups attached to the phenyl rings and the heteroatom in the heterocyclic ring. Is this compound supposed the non-HCl version of UP284 (page 9 of specification)?
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In structure 2, it is the group attached to the NH-C(O)-CH2 portion. Based on the last compound shown on page 7 of the specification, it could be chloro.
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In structure 3, it is the element that is attached through a double bond to the C-CH=CH2 group. Is this compound intended to be Up132 (specification page 9)?
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In structure 4, it is the functional group attached to the C(O) group. Is the group a methyl group or a trifluoromethyl group? Is this compound intended to be Up290 (specification page 10)?
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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]).
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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).
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.
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Provisional application 63/036368 recites the same figure 2.
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Conclusion
Claims 1, 2, 4-6, and 8 are not allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699