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 .
Claims 1-14, 16-18, 23, 34, and 35 are pending in the instant application. Claims 9, 14, 16-18, and 23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected subject matter. Claims 1-6, 8, 10, 11, 13, 34, and 35 are rejected. Claims 7 and 12 are objected.
Election/Restrictions
It is noted that the search of the Markush-type claim has been extended to the non-elected species wherein:
a compound having the structure of Formula I wherein
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is a double bond; Q is absent; Z1 and Z2 are C; E2 is absent; E1 is L1-R1; L1 is
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; and the remaining variables are as defined in the claims.
As prior art has been found which anticipates the above identified nonelected species, the Markush-type claims are rejected as follows and the subject matter of the claims drawn to nonelected species held withdrawn from consideration. Claims 1-8, 10-13, 34, and 35 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since art was found on the nonelected species, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Response to Amendment and Arguments/Remarks
The amendment and arguments/remarks filed on March 24, 2026 have been fully considered and entered into the application. With regards to the 35 U.S.C. 102(a)(1) rejection as being anticipated by Kempter et al. and the claim objections, the grounds for rejection and objection are moot in view of Applicant’s amendment and the rejection and objection have been withdrawn.
However, this amendment has necessitated new grounds of rejection under 35 U.S.C. 102(a)(1), which are described below.
New 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.
Claims 1-6, 8, 10, 11, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2010/0280023 A1.
US 2010/0280023 A1 discloses the intermediate compound 2-(Benzimidazol-2-yl)-4-(2-furyl)thiazole (see [0369]) which anticipates a compound of the instant claims wherein
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is a double bond; Q is absent; G is N; J1 is N(H); Z1 and Z2 are C; E2 is absent; E1 is L1-R1; L1 is
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; D1-D4 are H; and R1 is
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.
Claims 1-6, 8, 10, 11, 34, and 35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 5,958,950.
U.S. Patent No. 5,958,950 discloses the compound Example 1 and a pharmaceutical composition thereof (see column 10) which anticipates a compound of the instant claims and a pharmaceutical composition thereof wherein
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is a double bond; Q is absent; G is N; J1 is N(H); Z1 and Z2 are C; E2 is absent; E1 is L1-R1; L1 is
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; D1-D4 are H; and R1 is
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.
With respect to the art rejection above over claims 34 and 35, it is noted that the reference does not teach that the composition can be used in the manner instantly claimed (i.e. to treat cancer). However, the intended use of the claimed composition does not patentably distinguish the composition, per se, since such disclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Claim Objections
Claims 7 and 12 are objected to for depending on a previously rejected claim. However, even if they are amended to be in independent form, they would still not be in condition for allowance because they contain non-elected subject matter. In other words, the subject matter or species which are not embraced by the elected embodiment or the above identified nonelected species have been withdrawn from further consideration.
Conclusion
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 KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Alstrum-Acevedo can be reached on 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622
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