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 .
Priority
This application, filed 17 December, 2021, is a national stage application of PCT/JP2019/049670, filed 18 December, 2019, which claims foreign benefit of Application JP2019-011929, filed 28 January, 2019.
Information Disclosure Statement
One information disclosure statements (IDS) submitted on 12 November, 2025 is acknowledged and has been considered.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9 January, 2026 has been entered.
Status of the Application
Receipt is acknowledged of Applicant’s claimed invention, 9 January, 2026, in the matter of Application N° 17/424,334. Said documents have been entered on the record.
Claims 1, 4, 7, and 25 are amended. No new matter was introduced.
Thus, Claims 1, 4, 7, 13-15, 19, 21, and 25-36 represent all claims currently under consideration.
Response to Amendment
Applicant’s amendments are sufficient to overcome the previous rejections of Claims 1 and 7 under 35 U.S.C. 103.
Applicant’s argument regarding the rejection of Claim 25 under 35 U.S.C. 103 is not persuasive as they address only one of the combined sources, Attaryan. However, the same prima facie case of obviousness with the combined references of Attaryan and Patani would apply to the newly amended R3’ as it did to the similarly amended R3.
No Terminal Disclaimer has been filed regarding the previously maintained non-statutory Double Patent rejection over co-pending Application 17/783,104. It is noted a Notice of Allowance has been issued for that application on November 2025, though is not yet formally patented.
Below can be found new grounds of rejection necessitated by amendments.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Attaryan (ISSN 1070-3632, Russian Journal of General Chemistry, 2007, Vol. 77, No. 6, pp. 1139-1140, previously cited), further in view of Patani (Chemical Reviews, 1996, Vol. 96, No. 8, previously cited.)
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Regarding Claim 25, Attaryan teaches compound IIIa (Attaryan, Pg. 1139), shown top right, which overlaps with the instantly claimed Formula 12, shown bottom right, wherein R1 is an alkyl group (methyl), R1’ is an alkyl group (methyl), R2 is an alkyl group (methyl), R2’ is an alkyl group (methyl), and L is a saturated hydrocarbon group having one carbon atom.
Attaryan fails to teach a hydroxyl at the instant R3/R3’ positions.
However, Patani discloses Grimm’s Hydride Displacement Law, demonstrating that each vertical column as illustrated in Table 2, would represent a group of isosteres, and therefore have similar physiochemical properties (Patani, Pg. 3148, Col 2, Para 2, and Table 2.)
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Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to substitute the methyl groups of Attaryan’s compound with hydroxyl groups in the corresponding positions, as such substitutions are well known in the art as classical bioisosteric replacements. Attaryan teaches the use of a methyl groups at those positions, and it is established in medicinal chemistry that hydroxyl and methyl groups are commonly interchanged to fine-tune electronic or steric properties while retaining similar molecular size and shape. Given the similar physiochemical properties as disclosed by Patani, one would have been motivated to make these substitutions with a reasonable expectation of obtaining compounds with similar or improved pharmacokinetic properties.
Double Patenting (MAINTAINED)
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 1, 4, 7, 13-15, 19, 21, and 25-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 13-14, 16, 18, 21-22, 25-26, 28, and 31-32 of copending Application No. 17/783,104 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the referenced methods overlap in scope the instantly claimed methods, and depend from the instantly claimed compounds. For example, the reference discloses “the vasodilator can also be referred to as an antioxidant” (‘104, Pg. 4, Para 0017, Line 21), “an agent that scavenges ROS” (‘104, Pg. 4, Para 0017, Line 22), “which may be used in vivo or in vitro” (‘104, Pg. 15, Para 0058, Line 28.) Additionally, the reference teaches “the disease caused by the vascular stenosis may be…a disease caused by the vascular stenosis or other causes” (‘104, Pg. 21, Para 0078, Lines 12-13.) Therefore, the method for treating a disease caused by oxidative stress, wherein the disease is cerebral infarction, amyotrophic lateral sclerosis, Alzheimer’s disease, or Parkinson’s disease (as in instant Claims 19 and 21, and 32 and 34) would overlap the scope of the reference method claims wherein the disease caused by vascular stenosis is a central nervous system disease (‘104, Claims 24 and 33.)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Donna M. Nestor whose telephone number is (703)756-5316. The examiner can normally be reached generally (w/flex): 5:30a-5p EST M-Th.
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/D.M.N./Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627