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 9-11, 26, 28 and 31-32 are pending. Claims 9-11 and 31 are rejected. Claims 26 and 32 are objected to. Claim 28 is allowed.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/26/2025 has been entered.
Response to Amendment/Arguments
Applicant’s amendments have overcome the previously presented rejections. A call was made to John Kane on September 16th, 2025, to propose filing a Terminal Disclaimer to advance prosecution but the Examiner was unable to reach Applicant’s representative.
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 9-11 and 31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 17429048 in view of Sheridan, R.P. J. Chem. Inf. Comput. Sci. 2002, 42, 103-108.
The copending application discloses the following compound in claim 6 which is analogous to RA013917 of instant claim 9:
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The copending compound is analogous to a compound of formula (I) in instant claim 31 where Y is
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and Ra1 is H; however, the copending compound differs by having a pyrimidine ring where the instant claim requires pyridine.
Copending claim 1 teaches the following ring where Y1 and Y2 are defined as CH or N and requires that one or both of Y1 and Y2 are N. Regarding the structural change needed to arrive at the instantly claimed structure Sheridan reports a study that analyzes compounds with similar biological properties as follows (abstract):
We have written a method that extracts one-to-one replacements of chemical groups in pairs of drug-like molecules with the same biological activity and counts the frequency of the replacements in a large collection of such molecules. […]
Regarding one method of analysis, the replacement of –CH= with –N= in an aromatic ring was returned as the most frequent replacement to result in compounds with similar activity (Figure 5, page 106) and Sheridan et al. state that this “classical” replacement in medicinal chemistry can occur in pyridine <-> pyrimidine (page 105):
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Accordingly, a person having ordinary skill in the art would have been familiar with the common replacement of –N= with -CH= or replacement of pyrimidine with pyridine and would have reasonably expected that such a replacement in the copending compounds would result in an additional useful Hat activator compound. Regarding instant claims 10-11, copending claims 7-8 and 11 teach that the copending compounds are HAT activators and disclose a pharmaceutical composition comprising the compound. In the interest of optimizing particular compounds in the utilities of the copending application, a person having ordinary skill in the art would have been motivated to prepare closely related compounds that differ by replacement of -N= with -CH= with a reasonable expectation that they would have similar properties, wherein said compound would read on instant claims 9-11 and 31.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claim 28 is allowed.
Claim 26 and 32 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph K McKane can be reached at 571-272-0699. 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
/JOSEPH K MCKANE/Supervisory Patent Examiner, Art Unit 1626