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 .
Priority
This application was filed 04/06/2023 and is a 371 of PCT/US21/53696 (10/06/2021) which has PRO 63/088732 (10/07/2020). Claims 1, 3, 6, 9, 10, 18, 19, 29, 32, 33, 39, 40, 47, 49, 52, 53, 58-60 and 62 are before the Examiner.
Election/Lack of Unity of Invention
Applicant's election with traverse of group 1 in the reply filed on 12/10/2025 is acknowledged. The traversal is on the ground(s) that the structural feature X1-X2-Y1 is a special technical feature. This is not found persuasive because WO2016/028910 has the same feature and it is known as part of a SirT1 expression leading to the treatment of medical conditions. Due to this, this structural feature is not selective for PRMT8 and not a unifying structural feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 29, 32-33, 39-40, 47, 49, 52 and 53 in full are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/10/2025. Claims 1, 3, 6, 9, 10, 18, 19, 58, 59, 60 and 62 will be examined to the extent that they read upon the elected group 1.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
Claims 1, 3, 6, 9, 10, 18, 19, 58, 59, 60 and 62 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2016/028910. WO teaches APOE4 targeted therapeutics that increase SirT1 that may treat neurodegenerative diseases
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. A specific compound made is compound 24 on page 127
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as well as
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. This Markush anticipates claims 1 and where A is aryl, R1and R2 are alkyl, X2 is O, X1 is O or N; claim 6 where X2 is O. Claim 9 where Y1 is substituted with aryl. Claim 10 where the formula is (Ia). Claim 18 where the formula is IIa. Claim 19 is formula IIa. Claim 58 compound #22(WO)= compound 16; compound #6(WO)=compound 14. Claim 59 is anticipated by claims 32-33 of the WO. Claim 60 is anticipated by claim 35 of the WO. Claim 62 is anticipated by compounds 22, 6 and 24 of the WO as they are inherently PRMT8 inhibitors since they also treat neurodegenerative diseases.
Conclusion
The elected species is free of the above rejection but does not appear in a claim that is free of the above rejection.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D MARGARET M SEAMAN whose telephone number is (571)272-0694. The examiner can normally be reached M-F 8am-4pm Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D MARGARET M SEAMAN/Primary Examiner, Art Unit 1625