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 .
DETAILED ACTION
Status of 17/921,257
Claims 1-30 are currently pending.
Priority
Instant application 17/921,257, filed 10/25/2022, claims priority as follows:
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The priority document submitted in the file wrapper is not translated to English and as a result, priority cannot be established. Thus, claims 1-30 are granted the effective filing date of 7/1/2021.
Information Disclosure Statement
All references from the IDS submitted on 4/7/2023 have been considered unless marked with a strikethrough. The foreign references marked through in the IDS are not translated and thus cannot be formally considered.
Election/Restriction
Applicant’s election of Group II, claim 30, drawn to compounds as intermediates in the reactions of Group I, without traverse, in the reply filed 10/31/2025 is acknowledged. Applicant’s election of compound A:
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in the reply filed 10/31/2025, is also acknowledged.
Examination will begin with the elected species. In accordance with MPEP § 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the non- elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be examined again. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during further examination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final.
The elected species was searched and prior art was identified. See the 102 rejection below. During the search, an additional compound of claim 30 was identified, and the scope of the search was expanded to a Boc-protected elected species, known in the instant disclosure as A-7. The full scope of the claims has not yet been searched in accordance with Markush search practice. Claim 30 reads on the elected species. Claims 1-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species and/or group, there being no allowable generic or linking claim.
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.
Claim 30 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by The Regents of the University of Michigan (WO 2018/027097 A1, herein after “Michigan ‘097”).
The reference Michigan ‘097 discloses N-(phenylsulfonyl)benzamides and related compounds as BCL-2 inhibitors (title, abstract), and specifically discloses compound K (page 65, General Scheme 5):
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where Y is CH2 (page 63, General Scheme 3), which is the elected species. Thus, Michigan ‘097 anticipates claim 30.
In addition to the elected species, Michigan ‘097 discloses the Boc-protected piperazine (page 65, General Scheme 5):
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where Y is CH2 (page 63, General Scheme 3), anticipates instant compound A-7.
Claim 30 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by The Regents of the University of Michigan (US 2018/0354950 A1, herein after “Michigan ‘950”).
The reference Michigan ‘950 discloses N-(phenylsulfonyl)benzamides and related compounds as BCL-2 inhibitors (title, abstract), and specifically discloses compound K (page 56, General Scheme 5):
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where Y is CH2 (page 55, General Scheme 3), which is the elected species. Thus, Michigan ‘950 anticipates claim 30.
In addition to the elected species, Michigan ‘950 discloses the Boc-protected piperazine (page 55, General Scheme 5):
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where Y is CH2 (page 55, General Scheme 3), anticipates instant compound A-7.
Claim 30 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by The Regents of the University of Michigan (US 2019/0315739 A1, herein after “Michigan ‘739”).
The reference Michigan ‘739 discloses N-(phenylsulfonyl)benzamides and related compounds as BCL-2 inhibitors (title, abstract), and specifically discloses compound K (page 56, General Scheme 5):
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where Y is CH2 (page 55, General Scheme 3), which is the elected species. Thus, Michigan ‘739 anticipates claim 30.
In addition to the elected species, Michigan ‘739 discloses the Boc-protected piperazine (page 55, General Scheme 5):
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where Y is CH2 (page 55, General Scheme 3), anticipates instant compound A-7.
Conclusion
Claim 30 is rejected. Claims 1-29 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kendall Heitmeier whose telephone number is (703)756-1555. The examiner can normally be reached Monday-Friday 8:30AM-5:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton 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.
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/K.N.H./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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