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 .
Status of Claims
Claims 20-28 are pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/27/2026 has been entered.
Priority
Applicant’s claim for benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. This application is a CIP of 16/584,121, filed 09/26/2019, which is a CIP of 16/204,582, filed 11/29/2018, which is a CON of 15/406,036, filed 1/13/2017, which is a CON of 14/598,022, filed 1/15/2015, which claims priority to PRO application number 61/927,767, which was filed 1/15/2014.
However, the Examiner failed to find any support, including a lack of broad genus structure, in the Specification or claims of any priority document listed. The closest support includes the following genus structure, which includes a triazole ring that is not an embodiment in either of the structures of the instant application.
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However, in view of the applicant’s arguments, the Examiner went through the prosecution history and the filing receipts of the priority documents. Examiner searched prosecution history and filing receipts and found both applications are CIPs from the same parent application, however the ‘882 application is not found on the filing receipt of the instant application. Therefore, the Examiner does not grant an earlier priority date and the priority date is set as the filing date of the instant application (1/26/2022)
Information Disclosure Statement
All references from IDS(s) received 02/03/2022 have been considered unless marked with a strikethrough.
Response to Arguments
Applicant's arguments filed 2/26/2025 have been fully considered and have been found not persuasive.
In a final dated 10/29/2025, Claims 20-28 were examined upon their merits.
In a final dated 10/29/2025, Claims 20-28 were rejected 35 U.S.C. 102 and non-statutory double patenting. Claims 21-26 and 28 were objected to. The Applicant previously argued that both the instant application and application number 16/675,882 (now US 11013739) are CIPs of US 11234978. Examiner searched prosecution history and filing receipts and found both applications are CIPs from the same parent application, however the ‘882 application is not found on the filing receipt of the instant application. Therefore, the argument is found not persuasive and the 102 rejection is maintained.
The Applicant then filed an after final response with an amended specification, where they had indicated the priority had been fixed. The Examiner requested a new ADS to reflect the priority chain amendments. Applicant filed a new ADS but Examiner still fails to find where there is an application in the priority chain that provides support for the instant application. The Examiner also notes that the only application with support (‘882) was allowed in 2020, and therefore, the Examiner is unsure whether the priority chain can be amended since the current application is no longer copending per MPEP 211.01(b)(I). The Examiner consulted a QAS on the issue and the consensus was that the priority chain cannot be amended. Therefore, the 102 rejection is maintained.
**The Examiner suggests the Applicant to contact OPLA to get a recommendation on how to claim priority.
MAINTAINED REJECTIONS
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 20-28 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by Wise, J. et al. (US11013739; filed 11/06/2019 and published 3/05/2020; “Wise”).
Wise teaches the compounds 541 and 551 of independent claim 20 (Claim 1). Wise teaches the administration of the compounds in combination with one or more chemotherapeutic agents (Claim 9), including cytotoxic agents, microtubulin inhibitors, topoisomerase inhibitors, or rapamycin (Specification, para.0057 or Publication, Page 27, col. 23 (last paragraph) and 24 (first paragraph)), as required by instant claims 21-25. Wise teaches the compounds in a method of use in treating prostate or liver cancer, as required by instant claims 27-28 (Claim 1). Finally, Wise teaches the compounds may include a pharmaceutically acceptable salt or pharmaceutically acceptable excipient (Page 25, co. 19, line 6), as required by instant claim 26.
Therefore, instant claims 20-28 are anticipated by Wise.
Conclusion
Claims 20-28 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLA MARIA BAUER whose telephone number is (703)756-1269. The examiner can normally be reached Monday-Friday 7:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clint Brooks can be reached at (571) 270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.M.B./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621