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 30-36 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.
Response to Applicants Arguments/Amendments
The amendment entered 5/22/2026 has been entered. Claim 30 has been amended. Claims 1-29 have been cancelled. Claims 31-36 have been added, but are not considered new matter.
In the Non-Final dated 2/26/2026, claim 30 was rejected under 35 U.S.C. 102(a)(1) and 102(a)(2). In response, Applicant has struck through the anticipated compounds, which overcomes the rejection. Thus, the rejection is withdrawn.
However, Applicants amendments necessitated the new ground(s) or rejection presented in this Office Action.
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.
In the Non-Final dated 2/26/2026, the elected species was searched and prior art was identified. 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. In response, Applicant struck through the compounds in instant claim 30, which overcomes the rejection. Subsequent examination is based on the compound A-6 of the instant disclosure. The full scope of the claims has not yet been searched in accordance with Markush search practice. Claims 30 and 32 read on the expanded specie. Claims 31 and 33-36 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.
NEW REJECTIONS NECESSITATED BY AMENDMENT
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 30 and 32 are 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”) as evidenced by Dalal Institute (https://www.dalalinstitute.com/wp-content/uploads/Books/A-Textbook-of-Organic-Chemistry-Volume-1/ATOOCV1-12-1-Mechanism-of-Metal-Hydride-Reduction-of-Saturated-and-Unsaturated-Carbonyl-Compounds-Acids-Esters-and-Nitriles.pdf, Published 1/1/2019, Accessed 6/2/2026).
The reference Michigan ‘097 discloses N-(phenylsulfonyl)benzamides and related compounds as BCL-2 inhibitors (title, abstract), and specifically discloses the conversion of methyl 6-(4-chlorophenyl)spiro[3.5]non-6-ene-7-carboxylate to 6-(4-Chlorophenyl)spiro[3.5]non-6-ene-7-methanol (page 63, General Scheme 3):
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with lithium borohydride in THF. It is known in the art that the conversion of a methyl ester to an alcohol with lithium borohydride mechanistically proceeds through the aldehyde as evidenced by Dalal Institute (page 396):
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.
Thus, though not explicitly stated, instant compound A-6 is present as an intermediate in the reaction of Michigan ‘097 above. Michigan ‘097 anticipates claims 30 and 32.
Conclusion
Claims 30 and 32 are rejected. Claims 31 and 33-36 are 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 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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