DETAILED ACTION
All objections and rejections not mentioned below have been withdrawn.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/05/2026 has been entered.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 10/08/2025 is acknowledged. The traversal is on the ground(s) that Group I and Group V can be examined in the same application without undue burden on the Patent Office. This is not found persuasive because there is undue burden to the examiner as Group I claims compounds while Group V claims methods these require different fields of search for example they require different search queries. For example compounds can be searched in CAS Registry but methods cannot. Undue burden can be established by different search quires as stated in MPEP 808.02.
The requirement is still deemed proper and is therefore made FINAL.
Applicant’s elected with traverse Group I and elect the compound shown below, claims 12, 55, 62, 68-69, and 72-73 encompass the elected group and the elected species, in the reply filed on 10/08/2025 is acknowledged.
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Claims 56, 63-67, 70, 71 and 74 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group or species, there being no allowable generic or linking claim.
The elected species has been searched and found obvious over the prior art. Thus the scope of the search was halted at the elected species. Since the elected species has been found not allowable, examination has been limited to claims directed to the elected species, which are presently claims 12, 55, 62, 68-69, 72-73. Claims 12, 55, 62, 68-69, 72-73 have been examined to the extent that they are readable on the elected embodiment. Since the elected species has been found not allowable, subject matter not embraced by the elected embodiment is therefore withdrawn from further consideration.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 63/014,501 and 63/120,079, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Examined claims 12, 55, 62, 68-69, and 72-73 contain R2 = oxopiperidyl that is not supported by the prior applications and thus were given a priority date of 02/23/2021. This is in agreement with the of the same conclusion drawn by the Australian patent report provided in the latest IDS.
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)(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(s) 12, 55, 68-69, 72 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by NIEMAN (NIEMAN et al., US 20220204476 A1, effective filling date 2020-12-21).
The reference NIEMAN teaches the following compound (page 9), wherein Rd=H, R1=alkoxy, R2=
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, R3=R3a= substituted alkyl, n=1. This anticipates claims 12, 68-69, 72.
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The reference NIEMAN teaches “In certain embodiments, the disclosed compounds are useful for the treatment of a disease or disorder. Accordingly, pharmaceutical compositions comprising at least one disclosed compound are also described herein. For example, the present disclosure provides pharmaceutical compositions that include a therapeutically effective amount of a compound of the present disclosure (or a pharmaceutically acceptable salt or solvate or hydrate or stereoisomer thereof) and a pharmaceutically acceptable excipient”[0372]. This anticipates claim 55.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 12, 62 and 73 is/are rejected under 35 U.S.C. 103 as being unpatentable over ARNOLD (ARNOLD et al., US2023212152A1, effective filing date 2020-10-14).
The reference ARNOLD teaches the following compound (see reference claim 26), wherein Rd=H, R1=alkoxy, R3=R3a= benzothiazole, n=1
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The reference ARNOLD teaches the alternative structure with the six-membered ring(reference claim 9):
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The reference ARNOLD teaches the use for treating a viral infection for all compounds covered by claims 1-26 (reference claim 29):
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This helps to teach claims 62 and 73.
The reference ARNOLD does not teach a specific compound of instant claims 62 and 73 but instead requires modifying a lead structure based on generic formula.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified ARNOLD to get the elected species because the only difference between the two compound is one -CH2- unit and an additional -CH2- unit is suggested by reference claim 9. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Thus one of ordinary skill in the art would have a reasonable expectation that adding one -CH2- unit would also have similar inhibitory activity and thus would have been motivated to do so to also treat viral infections as suggested by reference claim 29.
Response to Arguments
Applicant's arguments filed 08/28/2026 have been fully considered but they are not persuasive.
The applicant argument against Arnold due to it not being positively recited in the rejection is moot as it has know been included in the new 103 rejection.
Applicants arguments based on the combination of references is moot as the new 103 rejection is a single reference 103.
The applicants arguments against Arnold providing a reasonable expectation of success is unpersuasive because the reference specifically points out expanding the five membered ring in reference claim 9 and then suggest that compounds of claims 1-26 have similar enough structure for treatment of viral infections.
Conclusion
Claims 12, 55, 62, 68-69, 72-73 are rejected.
Claims 56, 63-67, 70, 71 and 74 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISON AZAR HASTINGS whose telephone number is (703)756-4584. The examiner can normally be reached Mon-Thurs 7:30am-5pm EST Friday 7:30-4pm EST (every other Friday off).
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, Kortney Klinkel can be reached at (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISON AZAR HASTINGS/ Examiner, Art Unit 1627
