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 .
Status of Claims
Claims 1-2, 10, 14-15, 23-25, 27 and 34-37 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 16th, 2025 has been entered.
Restriction/Election
The instant claims are being examined according to MPEP 803.02 where the search and examination has been extended to include the species under 35 USC 102 and the entire scope of claim 14. Subject matter outside the scope of the elected species and expanded search and examination is withdrawn. As such, claims 10, 15, 23-25, 27 and 34-36 are withdrawn from consideration.
Response to Remarks
Rejections made in the previous Office Action have been overcome by Applicant’s amendments to the claims. Therefore, arguments pertaining to these rejections will not be addressed.
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed 08/19/2025 was considered by the Examiner.
Priority
Applicant’s claim for the 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. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 61/612210, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The instant claims contain several instances where the scope of variables is broadened relative to the disclosure of the provisional application, for instance the following differences are noted between the instant claims and the broadest disclosure of the provisional application found in claims 1 and 14:
For formula (I), instant claim 1 defines R2 to be is an optionally substituted aryl, alkyl, heteroalkyl, amide, CN, urea, sulfone, sulfoxide, sulfonamide; however, the provisional application defines the same variable as Ar1, wherein Ar1 is an optionally substituted aryl or heteroaryl. Thus, the instant application formula (I) encompasses compounds outside of the compounds encompassed by formula (I) of the provisional application.
Further, claim 14 of the instant application teaches compounds outside of those taught by the provisional application. For example, instant claim 14 discloses the following compound:
PNG
media_image1.png
224
128
media_image1.png
Greyscale
.
The provisional application does not teach this compounds.
For these reasons, the priority date for the purposes of prior art for the instant claims 1 and 14 is April 24th, 2020. Since the differences above also affect the scope of instant claims 2 and 37, the priority date for the purposes of prior art is April 24th, 2020.
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.
Claim(s) 1-2 and 37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2324437-35-4, which entered STN on June 5th, 2019.
CAS Registry No. 2324437-35-4 teaches the following compound:
PNG
media_image2.png
195
279
media_image2.png
Greyscale
.
Regarding claim 1, this compound is embraced by formula (I), wherein R2 is alkyl, as the instant specification defines alkyl to be “cycloalkyl groups” (paragraph [0047]), X and Y are N, Z is O, L is -CO-NH-, Ar2 is aryl and W is -SCF3.
Regarding claim 2, the compound is embraced by formula (II), wherein R2 is H.
Regarding claim 37, this claim recites that the compound is “formulated for oral administration” where “formulated for” is considered an intended use where any sample of a compound could be ingested orally. See MPEP 2111.02.
Allowable Subject Matter
Claim 14 is 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 claim.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anna Grace Kuckla whose telephone number is (703)756-5610. The examiner can normally be reached Monday-Friday 7:30-5.
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, Joseph 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.
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.
/A.G.K./Examiner, Art Unit 1626
/JOSEPH K MCKANE/Supervisory Patent Examiner, Art Unit 1626