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 .
DETAILED ACTION
This office action is a response to Applicant’s amendments/remarks after non-final rejection filed 2/20/2026.
As filed, claims 1, 4-6, 21, and 22 are pending, wherein claims 21 and 22 are new; claims 7-20 are withdrawn; and claims 2 and 3 are cancelled.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/20/2026 has been considered by the Examiner.
Election/Restrictions
Regarding the newly added claims 21 and 22, these claims are drawn to the elected invention of Group I. However, only claim 21 read on the elected species and thus, only claim 21 will be examined herein.
Claim 22 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Response to Amendments/Remarks
Applicant’s amendments/remarks, filed 2/20/2026, with respect to claims 1-6, have been fully considered and are entered. The status for each rejection in the previous Office Action is set out below.
The improper Markush grouping rejection of claims 1-4 and 6 is withdrawn per amendments and cancellation of claims 2 and 3.
The § 112(b) indefinite rejection of claims 1, 3, 4, and 6 is withdrawn per amendments and cancellation of claim 3.
The § 102(a)(1) rejection of claims 1-4 and 6 by CAS339 is withdrawn per amendments and cancellation of claims 2 and 3.
The § 102(a)(1) rejection of claims 1-3, 5, and 6 by CAS773 is withdrawn per amendment and cancellation of claims 2 and 3.
Claim Rejections - 35 USC § 112 fourth paragraph
The following is a quotation of the fourth paragraph of 35 U.S.C. § 112:
Subject to the following paragraph [concerning multiple dependent claims], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers (emphasis added).
Claim 5 is rejected under the fourth paragraph of 35 U.S.C. § 112 and under 37 CFR § 1.75(c), as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim(s), or amend the claim(s) to place the claim(s) in proper dependent form, or rewrite the claim(s) in independent form.
Regarding claim 5, the claim is dependent upon claim 1. The subject matter in claim 1 is drawn to a compound of instant formula (I-a). The subject matter in claim 5 is drawn to a limited embodiment of instant formula (I-a).
The scope of claim 5 is broader than scope of claim 1 because claim 5 includes species that are outside of instant formula (I-a) (see e.g.
PNG
media_image1.png
90
240
media_image1.png
Greyscale
,
PNG
media_image2.png
116
218
media_image2.png
Greyscale
wherein instant variable R3 is methyl, etc.). Because the scope of claim 5 is broader than claim 1, the claim failed to further limit the subject matter thereof, and fail to comply with the formal requirements set forth in the fourth paragraph of 35 U.S.C § 112.
The Examiner suggests that the claims be amended in a manner such that the scope of claim 5 is commensurate with the scope of claim 1.
Claim Rejections - 35 USC § 102
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 1, 4, 6, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chemical Abstract Registry No. 1402694-26-1, hereinafter CAS261.
Regarding claims 1, 4, 6, and 21, CAS339 teaches the following compound or pharmaceutical composition thereof (with unbuffered water), which meets all the limitations of these claims.
PNG
media_image3.png
142
266
media_image3.png
Greyscale
Wherein; instant variable L1 is -O-; instant variable R2 is
PNG
media_image4.png
60
124
media_image4.png
Greyscale
; instant variable ring B is phenyl; instant variable m is 0; and instant variable n is 0.
Claims 1, 4, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Isoquinoline-1,3-diones as Selective Inhibitors of Tyrosyl DNA Phosphodiesterase II (TDP2)”, hereinafter Kankanala.
Regarding claims 1, 4, and 6, Kankanala, for instance, teaches the following compounds or pharmaceutical composition thereof, which meets all the limitations of these claims. The pharmaceutical composition is inherently made when the following compounds were tested against hTDP2.
PNG
media_image5.png
52
256
media_image5.png
Greyscale
PNG
media_image6.png
162
258
media_image6.png
Greyscale
(pg. 2737, Table 1, Compounds 48 and 49)
PNG
media_image7.png
168
728
media_image7.png
Greyscale
(pg. 2736, Figure 3, compound 43)
Wherein; instant variable L1 is a covalent bond; instant variable R2 is
PNG
media_image4.png
60
124
media_image4.png
Greyscale
; instant variable ring B is phenyl, pyridine, or furan; instant variable m is 0; and instant variable n is 0.
Claim Objections
Claim 1 is objected to because of the following informalities:
Regarding claim 1, the claim recites “
PNG
media_image8.png
28
206
media_image8.png
Greyscale
”, which is no longer needed and can be deleted.
Appropriate correction is required.
Conclusion
Claims 1, 4-6, and 21 are rejected.
Claim 1 is objected.
Claims 7-20 and 22 are withdrawn.
Claims 2 and 3 are cancelled.
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.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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, Clinton 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
Prosecution Insights