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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 09/18/2025 is acknowledged. Applicant also elected compound
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without traverse. This compound appears to be compound ID 3 from claim 13.
Claim 20 has been amended to depend from Claim 1, hence, the rejoinder.
Claims 2-5, 8, 10, 11, 16, 17, 21-49, 51, 52, 54, 56, 59, 60, 62, 67-69 and 71-76 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/18/2025.
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, 6, 7, 9, 12-15, 18-20, 22-36, 41-45, 50, 53, 55, 57, 58, 61, 63-66 and 70 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 recited components L, R”, R14, R15, Rg, Rh, Ra, Rb, Rc, X, R1, R2, R3, R5, R6 with the phrase “selected from”. If Markush language is intended, the proper Markush language should read: selected from the group consisting of.
Claims 13, 18 and 31 were amended to delete all compounds, which makes the claim indefinite in view of the phrase “wherein the compound is selected from:”.
Claims 22-35 recite the limitation “[t]he method of claim 20, wherein R” in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 20 was amended to delete the compound.
Claim 36 recites the limitation “[t]he method of claim 20, wherein the compound is selected from” in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 20 was amended to delete the compound.
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.
Claim 1, 6, 7, 9, 12, 14, 15, 19, 20, 22-36, 41-45, 50, 53, 55, 57, 58, 61, 63-66 and 70 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/038717 A1 (WO ‘717).
WO ‘717 teaches a compound of Formula (I) or pharmaceutically acceptable salt, hydrate, solvate, prodrug, stereoisomer, or tautomer thereof for the treatment of cancer. See Abstract and pages 8, and 10-16. See also pages 3-6 for compound recited in claim 1.
Allowable Claims
Claims 13 and 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSAN T TRAN whose telephone number is (571)272-0606. The examiner can normally be reached Monday-Friday, 8:30 am-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT A. WAX can be reached at 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSAN T TRAN/Primary Examiner, Art Unit 1615
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