DETAILED ACTION
Notice of Pre-AIA or AIA Status
The inventor or joint inventor should note that the instant invention, 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 1-20 are pending in the instant invention. According to the Amendments to the Claims, filed July 15, 2022, claim 15 was amended and claim 20 was added.
Status of Priority
This invention is a 35 U.S.C. § 371 National Stage Filing of International Application No. PCT/US2021/014977, filed January 26, 2021, which claims priority under 35 U.S.C. § 119(e) to US Provisional Application No. 62/966,111, filed January 27, 2020.
Restrictions / Election of Species
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The inventor’s or joint inventor’s provisional election of the following, with traverse, in the reply filed on June 6, 2025, is acknowledged: a) Group II - claim 14; and b) substituted pyrazolo[4,3-d]pyrimidine of formula (Id) - p. 93, Example 1, compound 101, shown to the right below, and hereafter referred to as (S)-1-(6-(4-((5-amino-7-((1-hydroxyhexan-3-yl)amino)-1H-pyrazolo[4,3-d]pyrimidin-1-yl)methyl)-3-methoxybenzyl)-2,6-diazaspiro[3.3]heptan-2-yl)ethan-1-one, where R1 is shown to the left; and W is shown to the right above. Claim 14 reads on the elected species. Affirmation of this election must be made by the inventor or joint inventor in replying to this Office action.
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Similarly, the inventor or joint inventor should further note that since supposed errors in the restriction requirement were not distinctly and specifically pointed out, the election has been treated as an election, without traverse. See MPEP § 818.03(a).
Likewise, the inventor or joint inventor should further note that the requirement is still deemed proper and is therefore made FINAL.
Next, the inventor or joint inventor should further note that the elected species, shown to the right above, was found to be free of the prior art.
Moreover, the inventor or joint inventor should further note that claims 1-13 and 15-20 were withdrawn from further consideration, pursuant to 37 CFR 1.142(b), as being drawn to a nonelected or cancelled invention, there being no allowable generic or linking claim.
Thus, a first Office action and prosecution on the merits of claim 14 is contained within.
Specification Objection - Disclosure
The inventor or joint inventor is advised to format the specification according to 37 CFR 1.77(c). Revisions should particularly address bold-type, underline, and/or upper case formatting. Appropriate correction may be required.
Specification Objection - Abstract
The inventor or joint inventor is reminded of the proper content of an abstract of the disclosure.
With regard particularly to chemical patents, for compounds or compositions, the general nature of the compound or composition should be given as well as the use thereof, e.g., The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics. Exemplification of a species could be illustrative of members of the class. For processes, the reactions, reagents and process conditions should be stated, generally illustrated by a single example, unless variations are necessary. See MPEP § 608.01(b), Section B.
The abstract of the disclosure is objected to because it fails to exemplify any members or formulae illustrative of its class. Correction is required. See MPEP § 608.01(b).
The examiner suggests incorporating the structure of formula (Id) into the abstract, to overcome this objection.
Claim Objections
Claim 14 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
A compound of formula (Id):
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(Id)
or a pharmaceutically acceptable salt, stereoisomer, or tautomer thereof,
wherein:
R1 is:
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,
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,
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, or
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; and
W is:
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,
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,
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,
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,
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,
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, or
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.
Appropriate correction is required. See MPEP § 2173.02.
Claim Rejections - Obviousness-type Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute), so as to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined invention claim is not patentably distinct from the reference claims because the examined invention claim is either anticipated by, or would have been obvious over, the reference claims. {See In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969)}.
US Application No. 17/792,869
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Consequently, claim 14 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 4-6 of copending US Application No. 17/792,869. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 in the copending invention recites substituted pyrazolo[4,3-d]pyrimidines of the formula (Ib), where R1 is shown to the left above;
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R3 is shown to the right above; and R5 = -H, respectively, which provide overlapping subject matter with respect to the instantly recited substituted pyrazolo[4,3-d]-pyrimidines of the formula (Id), where R1 is shown to the left above; and W is shown to the right above, respectively.
The inventor or joint inventor should note that this is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
US Application No. 17/792,887
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Claim 14 is further rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 3-10 of copending US Application No. 17/792,887. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 9 in the copending invention recites substituted pyrazolo[4,3-d]pyrimidines of the formula (Ib), where R1 is shown to the left above; R4 is shown to the right above; and R5 = -H, respectively, which provide overlapping subject matter with respect to the instantly recited substituted pyrazolo[4,3-d]-pyrimidines of the formula (Id), where R1 is shown to the left above; and W is shown to the right above, respectively.
The inventor or joint inventor should note that this is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Similarly, the inventor or joint inventor should further note that a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 37 CFR 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground, provided the conflicting invention or patent either is shown to be commonly owned with this invention, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Likewise, the inventor or joint inventor should further note that the USPTO internet Web site contains terminal disclaimer forms which may be used, and the inventor or joint inventor is encouraged to visit http://www.uspto.gov/forms/, where (i) the filing date of the invention will determine what form should be used, and (ii) a web-based eTerminal Disclaimer may be filled out completely online using web-screens, respectively.
Moreover, the inventor or joint inventor should further note that an eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission.
Finally, for more information about eTerminal Disclaimers, the inventor or joint inventor should refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Allowable Subject Matter
No claims are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS M. WILLIS, whose telephone number is 571-270-5757. The examiner may normally be reached on Monday thru Thursday from 8:00-6:00 EST. The examiner is also available on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Jeffrey Murray, may be reached on 571-272-9023. The fax phone number for the organization where this invention or proceeding is assigned is 571-273-8300.
Information regarding the status of an invention may be obtained from Patent Center. For more information about Patent Center, see https://www.uspto.gov/patents/apply/patent-center. Should you have questions on access to Patent Center, contact the Patent Electronic Business Center (PEBC) at 866-217-9197 (toll-free) or ebc@uspto.gov.
/DOUGLAS M WILLIS/
Primary Examiner, Art Unit 1624