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 .
Response to Amendment
The amendments received 01/09/2026 have been entered. Claims 1-6, 9-11, 14-16, and 23-26 are pending. Any objection or rejection as set forth in the Office Action mailed 10/09/2025 not maintained herein has been overcome and is withdrawn.
Priority
Examiner acknowledges Applicant’s submission of English translations of foreign priority documents CN201810971406.2, CN201811403888.8, CN201910126817.6, and CN201910490783.9 together with a statement that each translation is accurate. Claims 1-6, 9-10, and 23-25 have been awarded the effective filing date of 08/24/2018. However, the compounds of claim 11 are not adequately described in CN201810971406.2 and CN201811403888.8. Therefore claim 11 has been awarded the effective filing date of CN201910126817.6 filed 02/20/2019.
Claim Rejections - 35 USC § 112(b)
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 14-15 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.
Claims 14-15 recite “said related diseases…include”. However, a list that sets forth alternative limitations (Markush group) should be closed (i.e., selected from a group “consisting of”). The transitional phrase “include” is indefinite as it is unclear what other alternatives are intended to be encompassed by the claim. See MPEP 2173.05(h).
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) 11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Cook et al. (WO 2020/141470 A1; effectively filed 2019; IDS submitted 07/14/2022).
Cook et al. discloses the following compounds (p. 155, p. 167).
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The compounds of Cook et al. are identical to the compounds of claim 11 (on pgs. 17-18 of claims filed 05/30/2025).
Response to Arguments
Applicant's arguments filed 01/09/2026 have been fully considered but they are not persuasive.
35 U.S.C. 112(b)
In the Remarks filed 01/09/2026, Applicant does not specifically address the above rejection under 35 U.S.C. 112(b) over the phrase “include” in claims 14 and 15. While Applicant’s response is considered bona fide, the rejection is maintained.
35 U.S.C. 102
Regarding the rejection of claim 11 over Cook et al. as above, Applicant argues that the claimed compounds are structurally distinct from the 4-oxo-1,4-dihydropyridine group of Cook et al., and that the instantly claimed compounds that do have a 4-oxo-1,4-dihydropyridine group are disclosed in the priority applications filed in 2018. This is not persuasive.
The above compounds as cited in Cook et al. are structurally identical to the following claimed compounds.
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While Applicant points to which of the two 2018 priority documents disclose the above compounds, claim 11 as a whole cannot be awarded the filing dates of 08/24/2018 or 11/23/2018. Per MPEP 2152.01, regarding foreign priority claims, the effective filing date of a claimed invention is the actual filing date of the application unless the claim is adequately supported in the foreign priority document. The effective filing date is therefore determined on a claim-by-claim basis and whether or not the claim as a whole is adequately described. A claim cannot be assigned more than one effective filing date. Although some of the compounds of claim 11 are supported by the 2018 foreign priority documents, they are not all supported. For example, the below compounds of claim 11 are disclosed in 201910126817.6, but not 201810971406.2 or 201811403888.8.
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As such, claim 11 as a whole cannot be awarded the effective filing dates of the 2018 foreign priority documents. Since the subject matter of Cook et al., referred to by the Examiner in the above rejection, was disclosed in the earliest filed priority document (U.S. provisional 62/787,965 filed 01/03/2019), the subject matter of Cook et al. has an earlier effectively filed date than that of instant claim 11. The rejection is maintained.
Allowable Subject Matter
Claims 1-6, 9-10, 16, and 23-26 are allowed.
Conclusion
Claims 1-6, 9-10, 16, and 23-26 are allowed. Claims 11 and 14-15 are rejected.
THIS ACTION IS MADE FINAL. 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 MADELINE E BRAUN whose telephone number is (703)756-4533. The examiner can normally be reached M-F 8:30am-5:00pm ET.
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/M.E.B./Examiner, Art Unit 1624 02/02/2026
/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624