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 .
Claims 1, 2, and 13 have undergone amendments. Claims 17 and 23 have been cancelled.
Election/Restrictions
A search for newly amended Claim 1 retrieved prior art (See STN Search, Search Notes). The search was expanded to encompass the entirety of Claim 1, with variables R1 and R2 coming together to form a ring system, with no prior art retrieved (See STN Search, Search Notes). The election of species requirement is lifted. The newly cited art represents a new grounds of rejection as Claim 1 has been amended from requiring that A is a conjugated unsaturated structure to requiring that the fused ring is bicyclic, tricyclic, tetracyclic, or pentacyclic, with no mention of degree of unsaturation.
Claims 25 and 27-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 October 2025.
Claims 1, 2, 6, 8, 11-13, 15, 16, and 18, submitted on 27 February 2026, represent all claims currently under consideration.
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.
Response to Amendment
The 35 U.S.C § 102 rejections over the cited STN registry references of the prior office action are each withdrawn. Applicant has amended the claims to exclude variable R3 being N with the substituents (selected from alkyl, haloalkyl, alkoxy, alkoxyalkyl, nitro, or nitroso) of R3 being further substituted. Each of the cited compounds, while containing alkoxy or alkyl groups, each have substitutions on these groups, with substitutions on these groups being excluded by the amended claims.
Response to Arguments
The 35 U.S.C. § 103 rejection of Claims 1, 2, 6, 8, 12, and 23 over Feige in view of Thornber is withdrawn. Applicant argues that the substitution of -O- and -NH- does not result in a compound with similar properties and activity, and that this replacement results in unexpected results. Feige shows that compounds COB275 and COB281 (the cited compounds for obviousness) inhibit endothelial cell migration and inhibit 3T3 cell scratch wound closure, but did not show the anti-tumor activity of these compounds. Applicant argues that compound I-18
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of the examined application has variable R3 as -O-, and has the same structural component as cited compounds COB275 and COB281 where the oxygen is substituted by tert-butyl. This compound has poor inhibitory effect on cancer, and is significantly lower than the compounds where R3 is N, demonstrating that compounds with N in this position unexpectedly have greater anti-tumor activity. The Examiner finds these arguments to be persuasive.
The provisional non-statutory rejection of Claims 1, 2, 6, 8, 12, 13, 15, 16, and 23 over Claims 1-5 and 7-8 of co-pending Application No. 18/833,809 is maintained as it is not the only rejection remaining.
Claim Rejections - 35 USC § 112(b)- NEW GROUNDS OF REJECTION
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, 6, 8, 11, 12, 13, 15, 16, and 18 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 is indefinite because the claim states that variable R3 is N substituted by one or two substituents selected from the group consisting of alkyl, haloalkyl, alkoxy, alkoxyalkyl, nitro, and nitroso. It is unclear what fills the valence of the nitrogen when N is only substituted by one of those substituent groups, resulting in an ionic compound which does not have a corresponding cation to balance out the negative charge. Claims 2, 6, 8, 11, 12, 13, 15, 16, and 18 are rejected as indefinite for depending upon an indefinite claim without resolving the underlying issue of indefiniteness.
Claims 1, 2, 6, 8, 11, 12, 13, 15, 16, and 18 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 is indefinite because the claim states that “m or n is 1, 2, 3, 4, 5, or and”. It is unclear how “or and” modifies the claim. The Examiner is assuming that the “or” is superfluous, and should be removed from the claim language. Claims 2, 6, 8, 11, 12, 13, 15, 16, and 18 are rejected as indefinite for depending upon an indefinite claim without resolving the underlying issue of indefiniteness.
Claim Rejections - 35 USC § 102- NEW GROUNDS OF REJECTION
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, 8, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN Registry No. 49743-48-8 (Entered STN: 16 November 1984).
STN Registry No. 49743-48-8
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has variable A as a substituted saturated fused tricyclic ring system, m and n each as 2, variables R1 and R2 each as O, and variable R3 as N substituted with ethyl, meeting the limitations of Claims 1, 8 and 11.
Double Patenting- REJECTIONS MAINTAINED
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 6, 8, 12, 13, 15, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-8 of copending Application No. 18/833,809 (Amended claims of 27 July 2024) (‘809) (reference application).
Claim 1 of ‘809 is directed to a diimide derivative of formula I
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wherein A is naphthalene or anthracene, fused with diimide through 3 carbon atoms; R1 is hydrogen, alkoxy, or nitro; m or n is 1, 2, or 3, and m+n is greater than or equal to 4; R2 is alkyl; R3 is hydrogen or alkyl; and R4 or R5 is alkyl, haloalkyl, or nitroso. Claim 2 of ‘809 is directed to the derivative of Claim 1, wherein the alkyl, is C1-C4 alkyl, the alkoxy is C1-C4 alkoxy, and the haloalkyl is C1-C4 haloalkyl. Claim 3 of ‘809 is directed to the derivative of Claim 1 wherein A is naphthalene. Claim 4 of ’809 claims the derivative of Claim 1 wherein R1 is nitro or C1-C4 alkoxy. Claim 5 of ‘809 claims the diimide derivative of Claim 1 wherein R3 is hydrogen. Claim 7 of ‘809 claims the diimide derivative of Claim 1 wherein R4 is C1-C4 haloalkyl and R5 is nitroso. Claim 8 of ‘809 claims the diimide derivative of Claim 1 wherein m and n are: m=1 and n=3, m=1 and n=2, or m=2 and n=2. The specification provides several compounds which meet the limitations of compounds of the examined application, such as Compound I-06
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(Page 9) which has variable A as naphthalene substituted with alkoxy, m as 1, variable R1 as N, n as 2, variable R2 as N substituted with alkyl, and variable R3 as N substituted with alkyl.
The claims are not patentably distinct because they overlap with what is claimed in the examined application, and provide compounds which meet the limitations of the claims and compounds of the examined application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1, 2, 6, 8, 11, 12, 13, 15, 16, and 18 are rejected.
THIS ACTION IS MADE FINAL. 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 PHILLIP MATTHEW RZECZYCKI whose telephone number is (703)756-5326. The examiner can normally be reached Monday Thru Friday 730AM-5PM EST.
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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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/P.M.R./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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