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 .
Claim Status
Claims 1-5, 9-10, 12-14, 17-19, 21, 25, 29-32 and 36 are pending. Claims 25 and 30-32 are withdrawn. 1-5, 9-10, 12-14, 18, 29 and 36 are allowable. Claims 17, 19, 21 are rejected.
Response to Amendment/Arguments
Applicant’s amendments have overcome the previously presented rejections.
Election/Restrictions
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicant’s elected combination of diffuse B-cell lymphoma and the compound of claim 29 is free of the art. Therefore, according to MPEP 803.02: should the elected species be found allowable, the examination of the Markush-type claim will be extended. The examination of the Markush-type claims has been extended to include the scope of claims 1-5, 9-10, 12, 29 and 36 which are free of the art.
Claims 1-5, 9-10, 12, 29 and 36 are allowable. The restriction requirement between species, as set forth in the Office action mailed on March 13th, 2024, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of March 13th, 2024 is partially withdrawn. Claims 13-14, 17-19 and 21, directed to a method of treatment comprising administering a compound of Formula (Id) are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. However, claims 25 and 30-32, directed to methods of treatment comprising administering compounds other than a compound of Formula (Id) are withdrawn from consideration because do not require all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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 17, 19 and 21 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.
Regarding claims, the phrase "for example" or “e.g.” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
REASONS FOR ALLOWANCE
The following is an examiner’s statement of reasons for allowance:
The closest prior art is the disclosure of WO 2017001812 A1 by Bell et al. (previously cited). The prior art teaches (title) “Compounds and their use as inhibitors of N-myristoyl transferase” and discloses the following compound (page 139):
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The compound is analogous to the compound of claim 29 which is embraced by instant formula (Id) where R1 is CH3 and R2 is H; however, it differs by the presence of a fluorine substituent where the instant compound requires chlorine.
Bell et al. disclose the use of the NMT inhibitor for “the treatment or prophylaxis of a disease or disorder in which inhibition of N-myristoyl transferase provides a therapeutic or prophylactic effect” (page 36). The prior art further notes (page 37):
inhibition of human NMT has also been suggested as a target for treating or preventing various diseases or disorders, for example hyperproliferative disorders (cancers, e.g. human colorectal cancer, gallbladder carcinoma, brain tumors, lymphomas such as B-cell lymphoma)…
However, Bell et al. do not teach any NMT inhibitors wherein the compound is substituted by chlorine in the manner required by the instant genus. Although Bell et al. teach a genus that is generic to F, Cl, or Br in this position (Formula I*, pages 11-12), the disclosure is also directed to diseases other than cancer, such as malaria and HIV. Accordingly, even if a person of ordinary skill were motivated to select the compound above to modify and make additional useful NMT inhibitors, the prior art provides no motivation or guidance for modifying this compound in the manner required to yield a compound of instant Formula (Id) specifically for the treatment of cancer. For these reasons, the prior art neither anticipates nor renders obvious the instant claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Allowable Subject Matter
Claims 1-5, 9-10, 12-14, 18, 29 and 36 are allowable.
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 ASHLI A CHICKS whose telephone number is (571)270-0582. The examiner can normally be reached M-Th 7 a.m.- 5 p.m..
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, James H Alstrum-Acevedo can be reached at (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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/A.A.C./ Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/ Primary Examiner, Art Unit 1626
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