DETAILED ACTION
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 9-10, 15-18 and 66-67 are pending in the instant application. Claims 9, 15 and 17-18 are amended and claims 1-8, 11-15 and 19-65 are cancelled via the amendment filed August 24th, 2026.
Priority
This is a 35 U.S.C. 371 National Stage filing of Application No. PCT/US2021/053864 filed October 6th, 2021, which claims priority to provisional application 63/088,876, filed October 7th, 2020.
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed 08/24/2026 was considered by the Examiner.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 24th, 2026, has been entered.
Withdrawn Objections
Applicant’s arguments and amendments filed August 24th, 2026, with respect to objection of claims 17-18 have been fully considered and are persuasive. The objection of claims 17-18 has been withdrawn.
Applicant has overcome this objection as the rejection of the base claim, claim 9, has been overcome. See Withdrawn Rejections section below.
Withdrawn Rejections
Applicant’s arguments and amendments filed August 24th, 2026, with respect to 102(a)(1) rejection of claims 9-10 and 66 over Changunda have been fully considered and are persuasive. The 102(a)(1) rejection of claims 9-10 and 66 has been withdrawn.
Applicant has overcome this rejection by amending claim 9 to remove the option for R1 to be alkoxy.
Applicant’s arguments and amendments filed August 24th, 2026, with respect to 102(a)(1) and 102(a)(2) rejection of claims 9, 15, 16 and 66 over William have been fully considered and are persuasive. The 102(a)(1) and 102(a)(2) rejection of claims 9, 15, 16 and 66 has been withdrawn.
Applicant has overcome this rejection by amending claim 9 to remove the option for Z to be optionally substituted NH2.
Response to Remarks
Applicant’s arguments with respect to the claim objections have been considered but are moot as Applicant’s amendments have overcome the objection.
Applicant’s arguments with respect to the 102 rejections of claim(s) 9-10, 15-16 and 66 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s amendments have necessitated a new grounds rejection presented below.
Restriction/Election
Applicant’s election without traverse of “Compound 142” to prosecute the invention of Group II, a compound of Formula II, in the reply filed on October 3rd, 2025 is acknowledged.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species of the Compound 142 appears allowable. Therefore, according to MPEP 803.02: should the elected species be found allowable, the examination of the Markush-type claim will be extended. If the examination is extended and a non-elected species found not allowable, the Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration. The examination of the Markush-type claims has been extended to include the scope of claims 17 and 18, as well as structural species:
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Since a non-elected species has been found not allowable, examination has been limited to claims directed to the elected species, which are presently claims 9-10, 15-18 and 66. Claims 9-10, 15-18 and 66 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since the nonelected species has been found not allowable, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Claim 67 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention or species. Election was made without traverse in reply filed October 3rd, 2025.
New 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.
Claim(s) 9-10, 15 and 66 are newly rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yan et al (Org. Lett. 2015, 17, 3536−3539).
Yan teaches the following compound (Schemes):
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Regarding claim 9, this compound is embraced by instant formula II, wherein W, X and Y are C, R1 is -phenyl substituted with 1 C1 alkyl, R2 is -C(O)C1 alkoxy, R3 is hydrogen, R4 is -phenyl, Z is -phenyl substituted with C1 alkyl.
Regarding claim 10, this compound is of Formula IIa.
Regarding claim 15, R1 is -phenyl substituted with 1 C1 alkyl.
Regarding claim 66, Yan teaches that the compound above, was in a reaction with multiple solvents (Schemes). Regarding the preamble of the instant claim “A pharmaceutical composition”, MPEP 2111.02(II) notes “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”. In this situation, the preamble is not considered limiting since it does not affect the structure of the compound of formula (I).
Allowable Subject Matter
Claims 16-18 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
No claim is allowed.
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/A.G.K./Examiner, Art Unit 1626
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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