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
This action is in response to a request for continued examination received May 20th, 2026.
Status of Claims
Claims 1-2, 45, 49, 51, 55, 70, 78, 80, 102, 105, 137-138, 141, 144, 147, 152-153, 158, and 160-161 are pending in the instant application.
Claims 3-44, 46-48, 50, 52-54, 56-69, 71-77, 79, 81-101, 103-104, 106-136, 139-140, 142-143, 145-146, 148-151, 154-157, 159, and 162-164 have been canceled.
Claims 153, 158, and 161 stand withdrawn.
Withdrawn Rejections/Objections
Applicant’s amendment is sufficient to overcome the rejections of Claims 1-2, 45, 49, 51, 55, 70, 78, 137-138, 141, and 144 under 35 U.S.C. 102(a)(1). These rejections are hereby withdrawn.
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 1 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “R4 is hydrogen, substituted or unsubstituted alkyl, -C(=O)ORA, -C(=O)RA, -C(=O)N(RA)2, or a nitrogen protecting group” in lines 3-4 of Page 3 of the instant Claims and “each R5 is independently -ORA, -N(RA)2, substituted or unsubstituted alkyl, substituted or unsubstituted carbocyclyl, substituted or unsubstituted aryl, substituted or unsubstituted heterocyclyl, or substituted or unsubstituted heteroaryl” at lines 5-7 of Page 3 of the instant Claims, and the claim also recites “R4 is hydrogen, substituted alkyl, -C(=O)ORA, -C(=O)RA, -C(=O)N(RA)2, or a nitrogen protecting group” at lines 25-26 of Page 3 of the instant Claims and “each R5 is independently -ORA, -N(RA)2, substituted or unsubstituted hetrocyclyl, or substituted or unsubstituted heteroaryl” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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 1-2, 45, 51, 70, 78, 80, 102, 137-138, 141, 144, 152, and 160 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2015/090226 (machine translation provided; hereinafter referred to as WO ‘226).
At Page 72 of WO ‘226, the following compound is taught:
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150
282
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This compound reads on a compound of Formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X and Y are N.
Z is CR3, wherein R3 is hydrogen.
T is
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74
88
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, wherein m is 0.
R1 is -ORA, wherein RA is unsubstituted alkyl, wherein unsubstituted alkyl is methyl.
R2 is hydrogen.
R4 is hydrogen.
s is 2, and each R5 is -ORA, wherein RA is unsubstituted alkyl, wherein unsubstituted alkyl is methyl.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a when the variables are defined as recited above.
Regarding Claim 152, WO ‘226 at Page 9, Second Paragraph of the provided machine translation teaches pharmaceutical compositions comprising the above compound.
Regarding Claim 160, these limitations are additionally anticipated, as per MPEP 2111.05, B., “Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists. For example, in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864.”
Claims 1-2, 45, 51, 70, 78, 80, 102, 137-138, 141 and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1394788-24-9 (entered into STN September 18th, 2012).
CAS Registry File 1394788-24-9 teaches a compound of the formula:
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229
428
media_image3.png
Greyscale
This compound reads on a compound of Formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X and Y are each N.
Z is CR3, wherein R3 is hydrogen.
T is
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68
80
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, wherein m is 0.
R1 is hydrogen.
R2 is unsubstituted alkyl, wherein alkyl is ethyl.
R4 is hydrogen.
s is 1. R5 is -ORA, wherein RA is unsubstituted alkyl, wherein unsubstituted alkyl is methyl.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Claims 1-2, 45, 51, 70, 78, 80, 102, 137-138, 141 and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1436104-51-6 (entered into STN June 9th, 2013).
CAS Registry File 1436104-51-6 teaches a compound of the formula:
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221
473
media_image5.png
Greyscale
This compound reads on a compound of formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X and Y are N.
Z is CR3, wherein R3 is hydrogen.
T is
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68
80
media_image4.png
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, wherein m is 0.
R1 is hydrogen.
R2 is unsubstituted alkyl, wherein alkyl is ethyl.
R4 is hydrogen.
s is 1. R5 is -ORA, wherein RA is hydrogen.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Claims 1-2, 45, 51, 70, 78, 80, 102, 105, 137-138, 141 and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1497548-77-2 (entered into STN December 18th, 2013).
CAS Registry File 1497548-77-2 teaches a compound of the formula:
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221
455
media_image6.png
Greyscale
This compound reads on a compound of formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X and Y are N.
Z is CR3, wherein R3 is unsubstituted alkyl, wherein alkyl is n-propyl.
T is
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68
80
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, wherein m is 0.
R1 and R2 are each hydrogen.
R4 is hydrogen.
s is 1. R5 is unsubstituted heterocyclyl, wherein heterocyclyl is pyrrolidinyl.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Claims 1-2, 51. 78, 80, 102, 105, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1497633-96-1 (entered into STN December 18th, 2013).
CAS Registry File 1497633-96-1 teaches a compound of the formula:
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200
490
media_image7.png
Greyscale
This compound reads on a compound of formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X and Z are each N.
Y is CR3, wherein R3 is unsubstituted alkyl, wherein alkyl is ethyl.
T is
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68
80
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, wherein m is 0.
R1 is hydrogen.
R2 is unsubstituted alkyl, wherein alkyl is methyl.
R4 is hydrogen.
s is 1. R5 is unsubstituted heteroaryl, wherein heteroaryl is pyrazolyl.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Claims 1-2, 45, 51, 78, 80, 102, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1497652-10-4 (entered into STN December 18th, 2013).
CAS Registry File 1497652-10-4 teaches a compound of the formula:
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221
488
media_image8.png
Greyscale
This compound reads on a compound of formula (I) as recited at instant Claim 1 when the variables are recited as follows:
X and Y are each N.
Z is CR3, wherein R3 is hydrogen.
T is
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68
80
media_image4.png
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, wherein m is 0.
R1 is hydrogen.
R2 is -ORA, wherein RA is unsubstituted alkyl, wherein alkyl is methyl.
R4 is hydrogen.
s is 2. Each R5 is -ORA, wherein RA is unsubstituted alkyl, wherein alkyl is methyl.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Claims 1-2, 45, 51,70, 78, 80, 102, 137-138, and 141 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1497706-47-4 (entered into STN December 18th, 2013).
CAS Registry File 1497706-47-4 teaches a compound of the formula:
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260
450
media_image9.png
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This compound reads on a compound of formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X and Y are each N.
Z is CR3, wherein R3 is unsubstituted alkyl, wherein alkyl is ethyl.
T is
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68
80
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, wherein m is 0.
R1 is unsubstituted alkyl, wherein alkyl is methyl.
R2 is hydrogen.
R4 is hydrogen.
s is 2. Each R5 is -ORA, wherein RA is unsubstituted alkyl, wherein alkyl is methyl.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Claims 1-2, 45, 51, 70, 78, 80, 105, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1497729-89-1 (entered into STN December 18th, 2013).
CAS Registry File 1497729-89-1 teaches a compound of the formula:
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259
515
media_image10.png
Greyscale
This compound reads on a compound of formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X and Y are each N.
Z is CR3, wherein R3 is hydrogen.
T is
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68
80
media_image4.png
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, wherein m is 0.
R1 is unsubstituted alkyl, wherein alkyl is methyl.
R2 is unsubstituted alkyl, wherein alkyl is ethyl.
R4 is hydrogen.
s is 1. R5 is unsubstituted heterocycyclyl, wherein heterocyclyl is pyrrodinyl.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Claims 1-2, 51, 70, 78, 80, 102, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1567425-69-7 (entered into STN March 12th, 2014).
CAS Registry File 1567425-69-7 teaches a compound of the formula:
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229
448
media_image11.png
Greyscale
This compound reads on a compound of formula (I) as recited at instant Claim 1 when the variables are defined as follows.
X and Z are each N.
Y is CR3, wherein R3 is unsubstituted alkyl, wherein alkyl is n-propyl.
T is
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68
80
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, wherein m is 0.
R1 and R2 are each hydrogen.
R4 is hydrogen.
s is 1. R5 is -ORA, wherein RA is hydrogen.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Claims 1-2, 45, 51, 70, 78, 80, 102, 137-138, 141, and 144 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1797914-50-1 (entered into STN March 12th, 2014).
CAS Registry File 1797914-50-1 teaches a compound of the formula:
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264
391
media_image12.png
Greyscale
This compound reads on a compound of formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X and Y are each N.
Z is CR3, wherein R3 is hydrogen.
T is
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68
80
media_image4.png
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, wherein m is 0.
R1 and R2 are each unsubstituted alkyl, wherein alkyl is methyl.
R4 is hydrogen.
s is 1. R5 is -ORA, wherein RA is hydrogen.
R6 is unsubstituted alkyl, wherein alkyl is ethyl.
R7 is hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Claims 1-2, 45, 78, 80, 102, 137-138, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1826277-40-0 (entered into STN December 10th, 2015).
CAS Registry File 1826277-40-0 teaches a compound of the formula:
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171
561
media_image13.png
Greyscale
This compound reads on a compound of formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X and Y are each N.
Z is CR3, wherein R3 is hydrogen.
T is
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68
80
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, wherein m is 0.
R1 is hydrogen.
R2 is unsubstituted heterocyclyl, wherein heterocyclyl is morpholinyl.
R4 is hydrogen.
s is 1. R5 is -ORA, wherein R5 is substituted alkyl, wherein alkyl is methyl, trisubstituted with fluoro.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Claims 1-2, 78, 80, 102, 137, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1827547-87-4 (entered into STN December 11th, 2015).
CAS Registry File 1827547-87-4 teaches a compound of the formula:
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203
591
media_image14.png
Greyscale
This compound reads on a compound of formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X and Z are each N.
Y is CR3, wherein R3 is hydrogen.
T is
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55
97
media_image15.png
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, wherein o is 0.
R1 is hydrogen.
R2 is unsubstituted heterocyclyl, wherein heterocyclyl is morpholinyl.
R4 is hydrogen.
s is 1. R5 is -ORA, wherein RA is unsubstituted alkyl, wherein alkyl is sec-butyl.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Claims 1-2, 80, 102, 137, and 144 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1827548-66-2 (entered into STN December 11th, 2015).
CAS Registry File 1827548-66-2 teaches a compound of the formula:
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171
624
media_image16.png
Greyscale
This compound reads on a compound of formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X and Z are each N.
Y is CR3, wherein R3 is hydrogen.
T is
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55
97
media_image15.png
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, wherein o is 0.
R1 is hydrogen.
R2 is unsubstituted heterocyclyl, wherein heterocyclyl is morpholinyl.
R4 is hydrogen.
s is 1. R5 is -ORA, wherein RA is unsubstituted alkyl, wherein alkyl is 2-methylpentyl.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of Formula I-a.
Allowable Subject Matter
Claims 49, 55, and 147 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Claims 1-2, 45, 51, 70, 78, 80, 102, 105, 137-138, 141, 144, 152, and 160 are rejected.
Claims 49, 55, and 147 are objected to.
No claims are allowed.
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.
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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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