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 .
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.
Current Status of 17/639,279
This Office Action is responsive to the arguments and amendments received 10 November 2025.
Claims 2-13, 20, 23-27, 32-33 are currently pending.
Election/Restrictions
Applicant’s election without traverse of the species N-(4-(4-amino-2,7-dimethyl-7H-pyrrolo[2,3-d]pyrimidin-5-yl)-3-methylphenyl)-2-(3-fluorophenyl)-2-hydroxyacetamide, in the reply filed on 6 June 2025, is acknowledged. This elected compound is shown on page 78 of the instant specification (drawn below).
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The elected species has been determined to read on claims 2-13, 20, 23-27, and 32-33. No claims are currently withdrawn due to Applicant’s election. A search for Applicant’s elected species did not retrieve applicable prior art or double patent art.
Priority
Applicant’s claim for the benefit of the prior-filed patent applications PCT/US2020/048621 (filed 28 August 2020) and 62/893,528 (filed 29 August 2019) under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) is acknowledged.
Response to Amendments
The objections to the specification, present in the previous office action, are hereby withdrawn due to Applicant’s amendments.
The objections to the claims, present in the previous office action, are partially withdrawn herein due to Applicant’s amendments. New objections to the claims are presented herein.
The 35 U.S.C. 112 rejections to the claims, present in the previous office action, are partially withdrawn herein due to Applicant’s amendments. New rejections to the claims are presented herein.
The 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) rejections to the claims, present in the previous office action, are hereby withdrawn due to Applicant’s amendments.
The 35 U.S.C. 103 rejections to the claims, present in the previous office action, are hereby withdrawn due to Applicant’s amendments.
Response to Arguments
Applicant argues that, as currently amended, the instant claims require a non-hydrogen substituent at the position referred to in the instant claims as R6. Applicant argues that this should remove the previous rejections under 35 USC 102. Applicant also provides arguments why substitution at this location would not have been obvious to one of ordinary skill in the art.
The Examiner has withdrawn the previous rejections under 35 USC 102 and 103 due to Applicant’s amendments and arguments.
Claim Objections
Claim 3 is objected to because of the following informalities: The phrase “R8, R9, or R10 are each independently” is grammatically incorrect due to the conjunction used. Applicant may choose to replace the quoted phrase with “R8, R9, and R10 are each independently”. Appropriate correction is required.
Claim 26 is objected to because of the following informalities: The list within this claim is grammatically incorrect, because it lacks the conjunction “and” before the final item in the list. Appropriate correction is required.
Claim 32 is objected to because of the following informalities: The phrase “or pharmaceutically acceptable salt thereof” is missing an article. Applicant may choose to replace the quoted phrase above with “or a pharmaceutically acceptable salt thereof”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 2-13, 20, 23-25, 27, and 32-33 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The following problem occurs within claim 2 (R1 and R2), claim 3 (R1 and R2), claim 4 (R1 and R2), claim 5 (R1 and R2), and claim 6 (R1 and R2). The example of R1, within claim 2, is given as follows, but Applicant is responsible for correcting each occurrence of this problem that produces indefiniteness. Claim 1 recites the phrase “R1 represents one or more substituents and each R1 is independently H, deuterium, halo…”. It is unclear how the concept of R1 can be multiple, independent groups. For example, as written, this would allow for R1 to represent H and 10 fluoro groups simultaneously. In this instance, it is not clear to the reader how or where these groups would be attached. This quoted phrase renders this claim and all claims dependent thereupon, being claims 2-13, 20, 23-25, 27, and 32-33, indefinite. Applicant may choose to replace the quoted phrase above with the phrase “R1 is H, deuterium, halo…” or “each R1 is independently H, deuterium, halo…”.
Claim 33 recites “comprising the compound or a pharmaceutically acceptable salt thereof”. Because “a pharmaceutically acceptable salt” was previously introduced in claim 32, this causes the reader to be confused whether this is a different salt than that of claim 32. This renders claim 33 indefinite. Applicant may replace the quoted phrase above with “comprising the compound or the pharmaceutically acceptable salt thereof”.
Conclusion
No claims are currently allowable.
THIS ACTION IS MADE FINAL. 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 JOHN D MCANANY whose telephone number is (571)270-0850. The examiner can normally be reached 8:30 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANDREW D KOSAR can be reached at (571)272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JDMc/Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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