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, 3-4, and 6-19 are pending in the instant application.
Claims 2 and 5 have been canceled.
Claims 13-18 stand withdrawn.
Withdrawn Objections/Rejections
Applicant’s amendment is sufficient to overcome the rejection of Claim 10 under 35 U.S.C. 112(b). This rejection is hereby withdrawn.
Applicant’s amendment is sufficient to overcome the rejection of Claims 1, 2, 4, 5, 8, and 12 under 35 U.S.C. 102(a)(1). Claims 2 and 5 have been canceled, rendering the rejection thereof moot. These rejections are hereby withdrawn.
Applicant has traversed the rejection of Claims 2, 5, 8, and 10 under 35 U.S.C. 103 as being unpatentable over Allen et. al. (“In vitro antimalarial and cytotoxic activities of semisynthetic derivatives of brusatol”, Eur J Med Chem, 1993; cited in non-final office action mailed August 1st, 2025; cited on Applicant’s Information Disclosure Statement filed April 18th, 2023; hereinafter referred to as Allen). Applicant’s cancellation of Claims 2 and 5 renders the rejection thereof moot.
The closest compound taught by Allen is compound 2b, taught at page 266. For clarity, the full structure of this compound is:
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619
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This compound reads on a compound of formula (I) as recited at Claim 1 when the variables are defined as follows:
R1 is
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66
63
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.
R is NHBox.
R’ is C8 alkyl.
Notably, the present amendment requires that when R’ is C1-C7 alkyl, that it is substituted C1-C7 alkyl. Therefore, due to the lack of substitution in the alkyl chain in the compound taught by Allen, this rejection is overcome by the amendment.
The rejection of Claims 2, 5, 8, and 10 under 35 U.S.C. 103 is hereby withdrawn.
The following Objections and Rejections are Necessitated by Amendment:
Claim Objections
Claim 19 is objected to because of the following informalities:
Rule 1.141(a) states:
Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form (§ 1.75) or otherwise include all the limitations of the generic claim.
Claim 19 claims a large number of species of the generic claim, but in independent format. Multiple inventions may not be claimed in a single application unless they are species claims which are dependent upon the larger, generic claim. In the past, the Office has held a “reasonable number” to be five (5) species. The present claim contains well over this number of species. One could envision forty pages of species compounds in a single claim which is not dependent upon any genus claim. This would cause undue burden to the Office in examining such a large claim. Therefore, it is recommended that Claim 19 either be dependent from a larger, genus claim, or, that claim 19 incorporate all of the limitations of the genus claim. Applicants are invited to contact the examiner if further clarification is needed. No new matter is permitted. 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.
Claim 3 is 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.
Claim 3 recites the limitation "The composition of claim 1, wherein the compound is selected from the group consisting of: …
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268
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" in the second line at Page 5 of the instant claims. There is insufficient antecedent basis for this limitation in the claim. This compound reads on a compound of formula (I) when R1 is
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. R is then defined as NH2. This compound would then require R’ to be defined as methyl, for which the claim lacks antecedent basis, as R' can be substituted C1-C7 alkyl, but not unsubstituted C1-C7 alkyl, as required by this compound.
Allowable Subject Matter
Claim 3 is rejected.
Claim 19 is objected to.
Claims 1, 4, 6-12 are allowed.
Claims 13-18 stand withdrawn.
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 DANIEL JOHN BURKETT whose telephone number is (703)756-5390. The examiner can normally be reached Monday - Friday.
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, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.J.B./ Examiner, Art Unit 1624
/JEFFREY H MURRAY/ Supervisory Patent Examiner, Art Unit 1624
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