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 1-2, 45, 49, 51, 55, 70, 78, 80, 102, 105, 137-138, 141, 144, 147, 152-153, 158, 160-161, and 165 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Claims 153, 158, and 161 stand withdrawn.
Withdrawn Objections/Rejections
Applicant’s amendment is sufficient to overcome the rejections of Claims 1-2, 45, 51, 70, 78, 80, 102, 137-138, 141, 144, 152, and 160 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 These rejections are hereby withdrawn.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.
The rejection of Claim 1 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 is maintained.
Applicant has traversed this rejection, stating in the remarks filed September 11th, 2026 that, “Claim 1 initially specifies a list of options for R4 and R5, and subsequently specifies an additional provision, i.e., that either R4 or R5 is selected from the specified narrower lists of options. In other words, claim 1 specifies that each of R4 and R5 is selected from the initially recited list of options and that either R4 is selected from hydrogen, substituted alkyl, -C(=O)ORA, -C(=O)RA, -C(=O)N(RA)2, or a nitrogen protecting group, or each R5 is independently selected from -ORA, -N(RA)2, substituted or unsubstituted heterocyclyl, or substituted or substituted or unsubstituted heteroaryl. A person of ordinary skill in the art would find claim 1 to inform with reasonable certainty as to its scope.”
The Examiner does not find this argument persuasive.
Applicant’s argument suggests that a selection must be made from the narrower ranges recited for R4 or R5, as recited at Page 5 of the instant claims. This renders the metes and bounds of the claim indefinite, as it is unclear if defining R4 as one of the moieties recited in the narrower range, for example, then excludes R5 from being defined as one of the moieties recited in the narrower range. In particular, Applicant’s statement quoted above, … “either R4 or R5 is selected from the narrower lists of options” suggests that both R4 and R5 can not be selected from the narrower list of options.
Appropriate clarification is required.
The following rejections are necessitated by amendment:
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.
Claims 1-2, 45, 49, 51, 55, 70, 78, 80, 102, 105, 137-138, 141, 144, 152, and 160 are 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 1 recites the limitation “two RA groups are joined to form a substituted or unsubstituted…” and proceeds to list a selection of heterocyclic moieties. Based on the structure of Formula (I) and the recited variables, thereof, however, at least one RA substituent is bound to nitrogen. Therefore, several of the heterocyclic moieties recited instantly cann788ot be formed as part of a compound of Formula (I). For example, in no configuration can two RA moieties join to form an oxiranyl moiety in a compound of Formula (I). Forming an oxiranyl with two RA substituents would require a single oxygen bound to two RA substituents. In any case where an oxygen is bound to an RA substituent, the oxygen is necessarily bound to the rest of the structure of formula (I). As such, as defined, oxiranyl moieties are incapable of being formed by two RA substituents. This is similarly true for the thiiranyl, oxetanyl, thietanyl, tetrahydrofuranyl, dihydrofuranyl, tetrahydrothiophenyl, dihidrythiophenyl, dioxolanyl, oxathiolanyl, dithiolanyl, tetrahydropyranyl, thianyl, dithianyl, dioxanyl, oxepanyl, thiepanyl, oxecanyl, thiocanyl, dihydrobenzofuranyl, dihydrobenzothienyl, tetrahydrobenzothienyl, tetrahydrobenzofuranyl, octahydrochromenyl, octahydroisochromenyl, decahydronapthyridinyl, decahydro-1,8-napthyridinyl, phthalimidyl, chromanyl, 6,7-dihydro-5H-furo[3,2-b]pyranyl, and 5,7-dihydro-4H-thieno[2,3-c]pyranyl moieties.
Dependent Claims 2, 45, 49, 51, 55, 70, 78, 80, 102, 105, 137-138, 141, 144, 152, and 160 do not resolve this indefiniteness, and therefore are also included in the rejection.
Appropriate clarification is required.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 51, 70, 78, 137-138, and 141 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akhtar et. al. (“Structure-based pharmacophore models to probe anticancer activity of inhibitors of protein kinase B-beta (PKB β)”, Chem Biol Drug Res, 2018; hereinafter referred to as Akhtar).
At Page 332, Akhtar teaches the following compound as ID:20797174:
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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, Y, and Z are each CR3, wherein each R3 is hydrogen.
T is
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75
88
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein one RA is H, and the second RA is a nitrogen protecting group. At Page 32, Paragraph [0063] of the instant specification, Applicant states “nitrogen groups such as amide groups … include, but are not limited to … benzamide …”. Accordingly, a person having ordinary skill in the art would reasonably ascertain that 2-methoxybenzamide reads on the limitation of a nitrogen protecting group.
R4 is unsubstituted alkyl.
s is 2, and 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-r.
Claims 1-2, 51, 70, 78, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1065520-05-9, entered into STN October 24th, 2008.
CAS Registry File 1065520-05-9 teaches a compound of the structure:
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259
593
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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, Y, and Z are each CR3, wherein each R3 is hydrogen.
T is
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70
85
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein one RA is hydrogen and the second RA is a nitrogen protecting group. At Page 32, Paragraph [0063] of the instant specification, Applicant states “nitrogen groups such as amide groups … include, but are not limited to … picolinamide, 3-pyridylcarboxamide …”. Accordingly, a person having ordinary skill in the art would recognize 4-pyridylcarboxamide as a nitrogen protecting group.
R4 is unsubstituted alkyl, wherein alkyl is methyl.
s is 1, and R5 is substituted alkyl, wherein substituted alkyl is trifluoromethyl.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of formula I-r.
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 1065504-10-0, entered into STN October 24th, 2008.
CAS Registry File 1065504-10-0 teaches a compound of the following structure:
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228
585
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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, Y, and Z are each CR3, wherein R3 is hydrogen.
T is
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70
85
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, wherein m is 0.
R1 is hydrogen.
R2 is R2 is -N(RA)2, wherein one RA is hydrogen and the second RA is a nitrogen protecting group that is 3-pyridylcarboxamide. At Page 32, Paragraph [0063] of the instant specification, Applicant states “nitrogen groups such as amide groups … include, but are not limited to … 3-pyridylcarboxamide …”.
R4 is hydrogen.
s is 1, wherein 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-r.
Claim 1-2, 51, 70, 78, 80, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1060524-26-6, entered into STN October 13th, 2008.
CAS Registry File 1060524-26-6 teaches a compound of the following structure:
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294
540
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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, Y, and Z are each CR3, wherein R3 is hydrogen.
T is
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70
85
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein one RA is H, and the second RA is a nitrogen protecting group. At Page 32, Paragraph [0063] of the instant specification, Applicant states “nitrogen groups such as amide groups … include, but are not limited to … benzamide …”. Accordingly, a person having ordinary skill in the art would reasonably ascertain that 2-methoxybenzamide reads on the limitation of a nitrogen protecting group.
R4 is hydrogen.
s is 1, and R5 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-r.
Claims 1-2, 51, 70, 80, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1944520-05-1, entered into STN July 4th, 2016.
CAS Registry File 1944520-05-1 teaches a compound of the following structure:
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228
428
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This compound reads on a compound of Formula (I) as recited at instant Claim 1 when the variables defined as follows:
X, Y, and Z are each N.
T is
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70
85
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, wherein m is 0.
R1 is unsubstituted alkyl, wherein unsubstituted alkyl is methyl.
R2 is -N(RA)2, wherein each RA is unsubstituted alkyl, wherein alkyl is methyl.
R4 is hydrogen.
s is 1, and R5 is unsubstituted alkyl, wherein alkyl is methyl.
R6 and R7 together with the carbon to which they are attached form a carbonyl.
Regarding Claim 2, this compound reads on a compound of formula I-cc.
Claims 1-2, 51, 70, 80, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 1956652-88-2, entered into STN July 21st, 2016.
CAS Registry File 1956652-88-2 teaches a compound of the formula:
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203
428
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This compound reads on a compound of Formula (I) as recited at instant Claim 1 when the variables defined as follows:
X, Y, and Z are each N.
T is
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70
85
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, wherein m is 0.
R1 is unsubstituted alkyl, wherein unsubstituted alkyl is methyl.
R2 is -N(RA)2, wherein each RA is unsubstituted alkyl, wherein alkyl is methyl.
R4 is hydrogen.
s is 0.
R6 and R7 together with the carbon to which they are attached form a carbonyl.
Regarding Claim 2, this compound reads on a compound of formula I-cc.
Claims 1-2, 49, 51, 70, 78, 80, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2060299-50-3, entered into STN January 27th, 2017.
CAS Registry File 2060299-50-3 teaches a compound of the following structure:
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253
413
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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 is CR3, wherein R3 is hydrogen.
Y and Z are each N.
T is
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70
85
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, wherein m is 1, and Rd is -ORA, wherein RA is hydrogen.
R1 is hydrogen.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is hydrogen.
s is 0.
R6 and R7 together with the carbon to which they are attached form a carbonyl.
Regarding Claim 2, this compound reads on a formula of I-gg.
Claims 1-2, 51, 70, 78, 80, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2061655-10-3, entered into STN January 30th, 2017.
CAS Registry File 2061655-10-3 teaches a compound of the following structure:
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208
428
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Y is CR3, wherein R3 is hydrogen.
X and Z are each N.
T is
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70
85
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, wherein m is 1, and Rd is -ORA, wherein RA is hydrogen.
R1 is -ORA, wherein RA is unsubstituted alkyl, wherein alkyl is methyl.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is hydrogen.
s is 0.
R6 and R7 together with the carbon to which they are attached form a carbonyl.
Regarding Claim 2, this compound reads on a compound of formula I-i.
Claims 1-2, 78, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2109468-81-5, entered into STN August 7th, 2017.
CAS Registry File 2109468-81-5 teaches a compound of the structure:
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268
450
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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:
Y is CR3, wherein R3 is hydrogen.
X and Z are N.
T is
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70
85
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, wherein m is 0.
R1 is unsubstituted heterocyclyl.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is unsubstituted alkyl, wherein alkyl is methyl.
s is 0.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of formula I-i.
Claims 1-2, 49, 51, 78, 80, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2180730-03-2, entered into STN February 27th, 2018.
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278
426
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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 is CR3, wherein R3 is hydrogen.
Y and Z are each N.
T is
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70
85
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, wherein m is 0.
R1 is substituted alkyl, wherein substituted alkyl is trifluoromethyl.
R2 is -N(RA)2, wherein each RA is unsubstituted alkyl, wherein alkyl is methyl.
R4 is hydrogen.
s is 0.
R6 and R7 together with the carbon to which they are attached form a carbonyl.
Regarding Claim 2, this compound reads on a compound of formula I-gg.
Claims 1-2, 51, 70, 78, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2280261-04-1, entered into STN March 7th, 2019.
CAS Registry File 2280261-04-1 teaches a compound of the structure:
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221
413
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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 CR3, wherein R3 is hydrogen.
Z is N.
T is
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70
85
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is unsubstituted alkyl, wherein alkyl is methyl.
s is 0.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of formula I-v.
Claims 1-2, 51, 70, 78, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2282289-74-9, entered into STN March 10th, 2019.
CAS Registry File 2282289-74-9 teaches a compound of the structure:
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221
413
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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 Z are each CR3, wherein R3 is hydrogen.
Y is N.
T is
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70
85
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is unsubstituted alkyl, wherein alkyl is methyl.
s is 0.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a formula of I-v.
Claims 1, 51, 70, 78, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2286850-21-1, entered into STN March 15th, 2019.
CAS Registry File 2286850-21-1 teaches a compound of the structure:
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221
413
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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:
Y and Z are each CR3, wherein R3 is hydrogen.
X is N.
T is
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70
85
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is unsubstituted alkyl, wherein alkyl is methyl.
s is 0.
R6 and R7 are each hydrogen.
Claims 1-2, 51, 70, 78, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2286943-74-4, entered into STN March 15th, 2019.
CAS Registry File 2286943-74-4 teaches a compound of the formula:
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221
413
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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:
Y is CR3, wherein R3 is hydrogen.
X and Z are N.
T is
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70
85
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is unsubstituted alkyl, wherein alkyl is methyl.
s is 0.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a formula of I-i.
Claims 1-2, 51, 70, 78, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2287103-99-3, entered into STN March 15th, 2019.
CAS Registry File 2287103-99-3 teaches a compound of the formula:
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221
413
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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, Y. and Z are each CR3, wherein R3 is hydrogen.
T is
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70
85
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is unsubstituted alkyl, wherein alkyl is methyl.
s is 0.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a formula of I-r.
Claims 1-2, 45, 51, 70, 78, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2289177-31-5, entered into STN March 19th, 2019.
CAS Registry File 2289177-31-5 teaches a compound of the formula:
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178
331
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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:
Z is CR3, wherein R3 is hydrogen.
X and Y are each N.
T is
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70
85
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is unsubstituted alkyl, wherein alkyl is methyl.
s is 0.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of formula I-i.
Claims 1-2, 51, 70, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2289183-44-2, entered into STN March 19th, 2019.
CAS Registry File 2289183-44-2 teaches a compound of the formula:
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413
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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, Y, and Z are each N.
T is
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70
85
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is unsubstituted alkyl, wherein alkyl is methyl.
s is 0.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of formula I-cc.
Claims 1-2, 49, 51, 70, 78, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2289183-31-7, entered into STN March 19th, 2019.
CAS Registry File 2289183-31-7 teaches a compound of the formula:
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221
413
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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 is CR3, wherein R3 is hydrogen.
Y and Z are each N.
T is
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70
85
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is unsubstituted alkyl, wherein alkyl is methyl.
s is 0.
R6 and R7 are each hydrogen.
Regarding Claim 2, this compound reads on a compound of formula I-gg.
Claims 1-2, 51, 70, 78, 80, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2309432-38-8, entered into STN May 16th, 2019.
CAS Registry File 2309432-38-8 teaches a compound of the formula:
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179
506
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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 is CR3, wherein R3 is cyano.
Y is CR3, wherein R3 is hydrogen.
Z is N.
T is
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85
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, wherein m is 0.
R1 is hydrogen.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is hydrogen.
s is 1, wherein R5 is unsubstituted alkyl, wherein alkyl is methyl.
R6 and R7 together with the carbon to which they are bound form a carbonyl.
Regarding Claim 2, this compound reads on a compound of formula I-v.
Claims 1-2, 80, 137-138, 141, and 144 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry File 2309435-41-2, entered into STN May 16th, 2019.
CAS Registry File 2309435-41-2 teaches a compound of the formula:
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268
483
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This compound reads on ac ompound of Formula (I) as recited at instant Claim 1 when the variables are defined as follows:
X, Y, and Z are each N.
T is
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, wherein m is 0.
R1 is unsubstituted carbocyclyl.
R2 is -N(RA)2, wherein each RA is hydrogen.
R4 is hydrogen.
s is 1, and R5 is unsubstituted alkyl, wherein unsubstituted alkyl is methyl.
R6 and R7 together with the carbon to which they are bound form a carbonyl.
Regarding Claim 2, this compound reads on a compound of formula I-cc.
Allowable Subject Matter
Claim 165 is allowed.
Claim 147 is 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, 49, 51, 55, 70, 78, 80, 102, 105, 137-138, 141, 144, 152, 160 are rejected.
Claim 147 is objected to.
Claim 165 is allowed.
Claims 153, 158, and 161 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.
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/D.J.B./ Examiner, Art Unit 1624
/BRENDA L COLEMAN/ Primary Examiner, Art Unit 1624
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