DETAILED ACTION
This office action is in response to the Applicant’s filing dated December 8th, 2025.
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 is a 371 of PCT/US2020/018890 filed on February 19th, 2020; and a provisional of 62/807,642 filed on February 19th, 2019.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 23rd, 2025 has been entered.
Status of Claims
Claims 2, 6-7, 13-14, 19, 23-24, 42-44, 46 and 57-61 are pending in the instant application. Acknowledgement is made of Applicant's remarks and amendments filed on October 23rd, 2025. Acknowledgement is made of Applicant's amendment of claims 2 and 23.
The restriction requirement between inventions and among species, as set forth in the Office Action mailed on September 5th, 2024, has been reconsidered pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that is directed to a compound of Formula (Ia). Specifically, the restriction requirement of September 5th, 2024 is partially withdrawn. Claims 6-7, 14, 19, 24 and 57-59, directed to compounds of Formula (Ia) are no longer withdrawn from consideration and are hereby rejoined and fully examined for patentability under 37 CFR 1.104; because the claims are directed to a compound of Formula (Ia). However, claims 43-44 and 46 directed to a method of treating various diseases and claims 60-61 directed to compounds not encompassed by Formula (Ia), remain withdrawn from consideration.
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Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable.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.
Compound CAS RN: 2479425-86-8 was found free of prior art. Therefore, examination has been expanded to encompass all compounds of Formula (Ia). This search retrieved prior art, discussed in the rejection below.
Claim Objections
Claims 7, 14, 19, 23-24, 42 and 57-59 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.
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 2, 6 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patterson et al. (Journal of Medicinal Chemistry, (2006), 49(21), 6298-6307).
Regarding claims 2, 6 and 13, Patterson teaches Chloromethyl Ketone Inhibitor (CMI) 13 (page 6299, Scheme 5):
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CMI 13 reads on instant Formula (Ia), wherein ring A is phenyl; wherein z2 is an integer, specifically 0; wherein L104 is C(O); wherein L105 is an unsubstituted branched C1 alkylene (addressing instant claim 13); wherein W is N, forming a 1,2,3-triazolylene; wherein L103 is a C1 alkylene substituted by C4 alkyl; and wherein R1 is E, specifically
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. Furthermore, CMI 13 reads on Formula (Iaa), when R2X, R2Y and R2Z are hydrogen (addressing instant claim 6). Chloromethyl Ketone Inhibitor 13 is the compound expanded to by the examiner.
Thus, the teachings of Patterson anticipate the compound of the instant claims 2, 6 and 13.
Claims 2, 6 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brak et al. (Journal of the American Chemical Society, (2008), 130(20), 6404-6410).
Regarding claims 2, 6 and 13, Brak teaches Chloromethyl Ketone Inhibitor (CMI) 14 (page 6406, Figure 3):
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CMI 14 reads on instant Formula (Ia), wherein ring A is phenyl; wherein z2 is an integer, specifically 0; wherein L104 is C(O); wherein L105 is an unsubstituted branched C1 alkylene (addressing instant claim 13); wherein W is N, forming a 1,2,3-triazolylene; wherein L103 is a C1 alkylene substituted by C4 alkyl; and wherein R1 is E, specifically
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. Furthermore, CMI 14 reads on Formula (Iaa), when R2X, R2Y and R2Z are hydrogen (addressing instant claim 6). Chloromethyl Ketone Inhibitor 14 is the compound expanded to by the examiner.
Thus, the teachings of Brak anticipate the compound of the instant claims 2, 6 and 13.
Conclusion
Claims 2, 6 and 13 are rejected.
Claims 7, 14, 19, 23-24, 42 and 57-59 are objected to.
No claim is allowed.
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.
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/C.L.J./Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691