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 19-36, 42, 44 and 51-58 are pending in this application.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/29/2026 has been entered.
Response to Amendment
Applicant’s amendment filed 01/29/2026 in response to the previous Office Action (09/29/2025) is acknowledged. Rejection of claims 19-20, 23, 29 and 42 under 35 U.S.C. 102(a)(1) (item 6) has been obviated. After a response to the Office Action dated 09/29/2025 and review of the search results, it is deemed necessary to raise new issues that needs further rejection.
Election/Restrictions
Applicant’s election without traverse of Group I and a single disclosed species (Compound TDI01470) in the reply filed on 02/02/2023 is acknowledged.
PNG
media_image1.png
92
311
media_image1.png
Greyscale
The examiner searched the elected species and found no prior art, but the elected species Compound TD01470 is recited in original claim 10 of the parent case 16/344,965 (now U.S. Patent No. 11,390,609).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-29, 42, 44 and 51-57 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 15-31 of U.S. Patent No. 10,329,282. Although the claims at issue are not identical, they are not patentably distinct from each other because there is significant overlap between the instant claims and over claims 1-10 and 15-31 of U.S. Patent No. 10,329,282. Note that many of the species recited in instant claim 28 are the same as the species recited in claim 9 of said patent.
Claims 19-29, 42, 44 and 51-57 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 10,323,023. Although the claims at issue are not identical, they are not patentably distinct from each other because there is significant overlap between the instant claims and over claims 1-29 of U.S. Patent No. 10,323,023. Note that the following species recited in claim 28 are the same as the species recited in claim 9 of said patent.
PNG
media_image2.png
157
832
media_image2.png
Greyscale
PNG
media_image3.png
300
797
media_image3.png
Greyscale
PNG
media_image4.png
411
744
media_image4.png
Greyscale
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 19-20, 23-24, 29, 42 and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Dong et al. WO 2007117995 A2. Cited reference teaches the following three compounds that are the same as applicants when applicant’s Formula (I) has the following substituents:
X = bond; ring BA = indole; Y = NH; ring CD is Thieno[2,3-d]pyrimidine or Thieno[3,4-d]pyrimidine; ring E = pyrazole; R1 = -SO2-CH2-CH3 and /or CH2N(CH3)2; R2 = H; R3 = methyl; R7 = H; R8 = CH3; and R9 = R10 = H.
PNG
media_image5.png
556
1291
media_image5.png
Greyscale
PNG
media_image6.png
130
1299
media_image6.png
Greyscale
PNG
media_image7.png
529
714
media_image7.png
Greyscale
PNG
media_image8.png
489
1267
media_image8.png
Greyscale
The only difference between applicants and the three prior art compounds is in the attachment of Y = NH to the pyrazole ring. The prior art compounds as shown above the NH moiety is attached at the 3-position of the pyrazole ring. To avoid prior art rejection previously on 09/15/2025 (see remarks below), applicants amended the attachment of variable Y to be fixed at 4-position.
PNG
media_image9.png
324
648
media_image9.png
Greyscale
Since the only difference between applicants and the prior art compounds is the position of Y = NH attachment to the pyrazole ring, the prior art compounds are position isomers of the claimed compounds. It is well established that position isomers are prima facie structurally obvious even in the absence of a teaching to modify. The isomer is expected to be preparable by the same method and to have generally the same properties. This expectation is then deemed the motivation for preparing the position isomers. This circumstance has arisen many times. See: Ex parte Englehardt, 208 USPQ 343, 349; In re Mehta, 146 USPQ 284, 287; In re Surrey, 138 USPQ 67; Ex Parte Ullyot, 103 USPQ 185; In re Norris, 84 USPQ 459; Ex Parte Naito, 168 USPQ 437, 439; Ex parte Allais, 152 USPQ 66; In re Wilder, 166 USPQ 545, 548; Ex parte Henkel, 130 USPQ 474; Ex parte Biel, 124 USPQ 109; In re Petrzilka, 165 USPQ 327; In re Crownse, 150 USPQ 554; In re Fouche, 169 USPQ 431; Ex parte Ruddy, 121 USPQ 427; In re Wiechert, 152 USPQ 249, In re Shetty, 195 USPQ 753.
For example, “Position isomerism has been used as a tool to obtain new and useful drugs” (Englehardt) and “Position isomerism is a fact of close structural similarity” (Mehta, emphasis in the original). See also MPEP 2144.09, second paragraph.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 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, JEFFREY MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Kahsay Habte/
Primary Examiner, Art Unit 1624
February 5, 2026