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 .
Claims 1 and 102-120 are pending in the application.
This action is in response to applicants' amendment dated May 28, 2026. Claim 1 has been amended, claims 83-95 and 99-101 have been canceled and claims 102-120 are newly added.
Response to Amendment
Applicant's arguments filed May 28, 2026 have been fully considered with the following effect:
The applicants’ amendments are sufficient to overcome the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejection, labeled paragraph 2) in the last office action, which is hereby withdrawn.
The applicant's amendments are sufficient to overcome the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejection, labeled paragraph 4) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections, labeled paragraph 5a) and c) in the last office action, which are hereby withdrawn.
The applicant's amendments are sufficient to overcome the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejection, labeled paragraph 6) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections, labeled paragraph 7a) and b) in the last office action, which are hereby withdrawn.
With regards to the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 8) in the last office action, the applicant’s amendments and remarks have been fully considered but they are not persuasive. The applicants’ stated that Orton fail to anticipate amended claim 1 which require that “at least two of R2, R3, R4 and R5 are not hydrogen,” or “R3 is not hydrogen”. The applicants further point to examples 11, 12 and 13, however, the compounds of formula as claimed herein where X is SO2; Y is NH (per amendment); RP is H; R² is H; R³ is Cl or CH3; R⁴ is H; R⁵ is H; and R⁶ is H as set forth in column 86, lines 30 and 60
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which is satisfied by the newly added proviso where R3 is not H thus 11 (Example 20) and 14 (Example 23) as set forth above anticipates the compounds of the instant formula.
Claim(s) 1, 102, 110 and 111 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Orton, U.S. Patent No. 9,416,101, for reasons of record and stated above.
The applicant's amendments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 9) in the last office action, which is hereby withdrawn.
With regards to the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 10) in the last office action, the applicant’s amendments and remarks have been fully considered but they are not persuasive. The applicants’ stated that Zhao fail to anticipate amended claim 1 which require that “at least two of R2, R3, R4 and R5 are not hydrogen,” or “R3 is not hydrogen”. The applicants further point to paragraphs [0110], [0114] and [0118], however, the compounds of formula as claimed herein where X is SO2; Y is NH (per amendment); RP is H; R² is OCH3; R³ is H; R⁴ is H; R⁵ is OCH3; and R⁶ is H as set forth in paragraph [0118] which is satisfied by the newly added proviso where at least two of R2, R3, R4 and R5 are not hydrogen thus [0118] as set forth above anticipates the compounds of the instant formula.
Claim(s) 1, 102, 110 and 111 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al., CN 105985265, for reasons of record and stated above.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 11) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 12) in the last office action, which is hereby withdrawn.
The applicant's amendments and arguments are sufficient to overcome the 35 U.S.C. 102(a)(1), anticipation rejection, labeled paragraph 13) in the last office action, which is hereby withdrawn.
With regards to the provisional nonstatutory double patenting rejection as being unpatentable over claims 83, 84 and 89-109 of copending Application No. 17/625,704 of the last office action, the applicants request that the Examiner hold the rejection over Application in 17/625,704 abeyance until there is allowable subject matter.
Claims 1, 102-116, 119 and 120 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 83, 84 and 89-109 of copending Application No. 17/625,704, for reasons of record and stated above.
With regards to the provisional nonstatutory double patenting rejection as being unpatentable over claims 83-101 of copending Application No. 18/817,959 of the last office action, the applicants request that the Examiner hold the rejection over 18/817,959 Application in abeyance until there is allowable subject matter.
Claims 1 and 102-116 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 83-101of copending Application No. 18/817,959, for reasons of record and stated above.
With regards to the nonstatutory double patenting rejection as being unpatentable over claims 1-21 of U.S. Patent No. 11,701,334 of the last office action, the applicants request that the Examiner hold the rejection over U.S. '334 in abeyance until there is allowable subject matter.
Claims 1, 102-105 and 110-114 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,701,334, for reasons of record and stated above.
In view of the amendment dated May 28, 2026, the following new grounds of rejection apply:
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 110-116 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Newly added composition claims where RP is hydrogen is not described in the specification with respect to
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where X is SO2 and Y is NH. The compounds where RP is hydrogen are intermediates in the preparation of the compounds where RP is not hydrogen. There is no statement of a pharmaceutical use for these compounds.
Claims 119 and 120 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Newly added compound and composition claims where RP is hydrogen is not described in the specification with respect to
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where X is SO2 and Y is CH2. There are no compounds and there is no statement of a pharmaceutical use for these compounds.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 102-116, 119 and 120 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. The following reason(s) apply:
Claims 1, 110, 119 and claims dependent thereon are vague and indefinite in that it is not known what is meant by “each substituent, if present, is independently chosen from halogen” in the definition of R2, R3, R4, R5, and R6.
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.
(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.
Claim(s) 119 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Silverman et al., U.S. 9,890,117. Silverman teaches the compounds and compositions of the formula where X is SO2; Y is CH2; RP is hydrogen; R2 is H; R3 is H; R4 is Cl or OCH3; R5 is H and R6 is H as set forth in examples 168 and 169.
Claim(s) 119 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bian et al., U.S. 8,362,000. Bian teaches the compounds and compositions of the formula where X is SO2; Y is CH2; RP is hydrogen; R2 is H; R3 is CF3; R4 is H; R5 is H and R6 is H as set forth in the example at the top of column 184.
Claim(s) 119 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lombardino et al., Journal of Medicinal Chemistry. Lombardino teaches the compounds and compositions of the formula where X is SO2; Y is CH2; RP is hydrogen; R2 is H or F; R3 is H, CF3 or F; R4 is H, Cl or F; R5 is H or F and R6 is H or F as set forth in examples 54, 55, 56 and 58.
Claim(s) 119 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Janczewski et al., Polish Journal of Chemistry (1983). Janczewski teaches the compounds and compositions of the formula where X is SO2; Y is CH2; RP is hydrogen; R2 is H; R3 is H; R4 is Br; R5 is H and R6 is H as set forth in registry no. 98808-62-9.
Claim(s) 119 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Janczewski et al., Annales Universitatis Mariae Curie-Sklodowska, Section AA: Physica et Chemia (1983). Janczewski teaches the compounds and compositions of the formula where X is SO2; Y is CH2; RP is hydrogen; R2 is H; R3 is Br; R4 is H; R5 is H and R6 is H as set forth in registry no. 111967-86-3.
Claim(s) 119 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Janczewski et al., Polish Journal of Chemistry (1986). Janczewski teaches the compounds and compositions of the formula where X is SO2; Y is CH2; RP is hydrogen; R2 is Br; R3 is H; R4 is H; R5 is H and R6 is H as set forth in registry no. 113425-27-7.
Claim(s) 119 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Janczewski et al., Polish Journal of Chemistry (1986). Janczewski teaches the compounds and compositions of the formula where X is SO2; Y is CH2; RP is hydrogen; R2 is Br; R3 is H; R4 is H; R5 is H and R6 is H as set forth in registry no. 113425-27-7.
Claim(s) 119 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Majewski et al., Polish Journal of Chemistry (1990). Majewski teaches the compounds and compositions of the formula where X is SO2; Y is CH2; RP is hydrogen; R2 is H or Br; R3 is H or Br; R4 is H or Br; R5 is H and R6 is H as set forth in registry nos. 136397-39-2, 13697-40-5, and 136397-41-6.
Claim(s) 119 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jablonska-Pikus et al., Annales Universitatis Mariae Curie-Sklodowska, Section AA: Chemia (1992). Jablonska-Pikus teaches the compounds and compositions of the formula where X is SO2; Y is CH2; RP is hydrogen; R2 is H; R3 is methyl; R4 is H; R5 is H and R6 is H as set forth in registry no. 147323-20-4.
Claim(s) 119 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jablonska-Pikus et al., Annales Universitatis Mariae Curie-Sklodowska, Section AA: Chemia (1992). Jablonska-Pikus teaches the compounds and compositions of the formula where X is SO2; Y is CH2; RP is hydrogen; R2 is H; R3 is H; R4 is methyl; R5 is H and R6 is H as set forth in registry no. 146853-00-1.
Claim(s) 119 and 120 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayakawa et al., JP 06247047. Hayakawa teaches the compounds and compositions of the formula where X is SO2; Y is CH2; RP is hydrogen; R2 is H; R3 is H; R4 is H; R5 is H and R6 is H as set forth in registry no. 161058-29-3 and 161058-30-6.
Claim(s) 1, 102, 110, and 111 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bollinger et al., U.S. 4,006,007. Bollinger teaches the compounds and compositions of the formula where X is SO2; Y is NH; RP is hydrogen; R2 is methyl; R3 is H; R4 is Br; R5 is H or Cl and R6 is H as set forth in examples I and II.
Claim(s) 1, 102, 110 and 111 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blaszkiewicz et al., U.S. 5,130,119. Blaszkiewicz teaches the compounds and compositions of the formula where X is SO2; Y is NH; RP is hydrogen; R2 is CF3 or F; R3 is H or CF3; R4 is F; R5 is H and R6 is H or F as set forth in examples 10, 15, 25b, 26b and 41a.
Claim(s) 1 and 110 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Woolley et al., Canadian Journal of Chemistry. Woolley teaches the compounds and compositions of the formula where X is SO2; Y is NH; RP is hydrogen; R2 is H; R3 is Cl; R4 is Cl; R5 is H and R6 is H as set forth in example III.
Claim(s) 1, 102, 106, 110, 111 and 115 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Isshiki et al., Yakugaku Zasshi. Isshiki teaches the compounds and compositions of the formula where X is SO2; Y is NH; RP is hydrogen; R2 is methyl; R3 is H; R4 is OH; R5 is isopropyl and R6 is H as set forth in example 34.
Note: Applicants are advised that this is just a sampling of the rejections of the amended claim 1 and the newly added claims. The applicants are advised that the database search of the pending claims contain at least twenty-three additional 102s, 103s and are advised to disclose any other non-statutory double patenting rejections that have not been identified at this time.
Allowable Subject Matter
Claims 117 and 118 are allowed. None of the prior art of record nor a search in the pertinent art area teaches the two species claimed herein.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDA L COLEMAN whose telephone number is (571)272-0665. The examiner can normally be reached Mon-Fri 10-6 (flex).
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/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624
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