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 the Claims
Claims 1, 2, 4, 9, 10, 12, 16, 17, 19, 21, 22, 27, 28, 33, 35, 48, 56, 79, 85 and 92 are pending.
Claims 10, 17, 19, 21, 28, 33, 85 and 92 are withdrawn.
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 national stage entry of and claims priority to Application Serial No. PCT/US20/64896, filed 12/14/2020; and further claims priority to provisional application 62/949,873, filed 12/18/2019.
Information Disclosure Statement
All references from IDS(s) received 07/08/2022, 01/04/2024, 04/24/2024, 05/31/2024, 01/17/2025, and 11/03/2025 have been considered unless marked with a strikethrough.
Election/Restrictions
Applicant’s election of Group I without traverse in the reply filed on 11/03/2025 is acknowledged.
Claims 85 and 92 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method of use, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/03/2025.
Applicant’s election of the compound below without traverse in the reply filed on 11/03/2025 is acknowledged.
PNG
media_image1.png
120
235
media_image1.png
Greyscale
Claims 10, 17, 19, 21, 28, and 33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as not reading on the elected species.
No anticipatory art was found of the elected specie, so the Examiner expanded her scope pursuant to MPEP 803. The expanded species are described in the 102 rejections. See 102 analysis below.
Claims 1, 2, 4, 9, 12, 16, 22, 27, 35, 48, 56, and 79 will be examined upon their merits.
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 1, 2, 4, 9, 12, 16, 22, 27, 35, 48, 56, and 79 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by Lau, W. (WO2017044623A1; cited in IDS filed 07/08/2022; “Lau”).
This rejection applies to the expanded specie, the 15th compound of instant claim 56.
PNG
media_image2.png
114
175
media_image2.png
Greyscale
Lau teaches an overlapping genus structure with the instant claims. More specifically, Lau teaches structural example of the expanded specie, see below.
PNG
media_image3.png
192
243
media_image3.png
Greyscale
(Lau, Compound 339, Table 2)
Therefore, Lau anticipates all the claims that the expanded specie reads on, including 1, 2, 4, 9, 12, 16, 22, 27, 35, 48, 56, and 79.
Claims 1, 2, 4, 9, 22, 27, 35, 48, 56, and 79 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Albright, J. et al. (J. Med. Chem. 1981, 24, 5; cited in IDS filed 07/08/2022; “Albright”).
This rejection applies to the expanded specie, the 34th compound of instant claim 56.
PNG
media_image4.png
80
179
media_image4.png
Greyscale
Albright teaches an overlapping genus structure with the instant claims.
PNG
media_image5.png
73
195
media_image5.png
Greyscale
(Table I)
More specifically, Albright teaches an example of the expanded specie, see below.
PNG
media_image6.png
68
708
media_image6.png
Greyscale
Therefore, Albright anticipates all the claims that the expanded specie reads on, including 1, 2, 4, 9, 22, 27, 35, 48, 56, and 79.
Conclusion
Claims 1, 2, 4, 9, 12, 16, 22, 27, 35, 48, 56, and 79 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.
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, 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.
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.
/N.M.B./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
Prosecution Insights