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 1, 3, 5-9 and 15-22 are pending.
Priority
Instant application 18/173,979, filed 02/24/2023, claims priority as follows:
PNG
media_image1.png
70
663
media_image1.png
Greyscale
Response to Amendment/Arguments
The amendment filed 04/01/2026 has been entered. Claims 1 and 17 are amended. Claims 2 and 4 are canceled.
Claims 17 and 22 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hamiaux et al. In response, applicant’s amendments have overcome the rejection. Therefore, the rejection under section 102 over Hamiaux is withdrawn.
Claims 17 and 22 were rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vizgunova et al. In response, applicant’s amendments have overcome the rejection. Therefore, the rejection under section 102 over Vizgunova is withdrawn.
Claims 1, 3-9, and 15-22 were provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 17-18 of copending Application No. 18/247,007 (reference application) in view of Castro et al. and Liang et al. In response, applicant’s amendments have overcome the rejection. Therefore, the provisional nonstatutory double patenting rejection is withdrawn.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 appears to have a typographical error. The claim preamble recites a compound of Formula I, but the structure in line two is labeled as II. The Formula number should be corrected.
Claim 17 is objected to because of the following informalities:
Claim 17 recites “Y1 is selected from the group consisting of -NR5”. The phrase “selected from the group consisting of” here is unnecessary and potentially confusing.
The Examiner suggests that the phrase “selected from the group consisting of” be deleted so that claim 17 instead recites “Y1 is -NR5”.
Claim 17 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 1 recites a compound of Formula I [sic]:
PNG
media_image2.png
181
260
media_image2.png
Greyscale
wherein the variables X-X3, R1, and R5 are defined in the claim.
Claim 17 recites a compound of Formula I:
PNG
media_image3.png
183
286
media_image3.png
Greyscale
wherein the variable Y1 is defined as -NR5; and wherein the variables R2 and R3 are defined as hydrogen. The variables X-X3, R1, and R5 in claim 17 have identical definitions to the same variables in claim 1.
Therefore, both claim 17 and claim 1 cover an identical compound genus.
Claim 22 is objected to as being a substantial duplicate of claim 9. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claims 9 and 22 are duplicates because both claims recite a pharmaceutical composition comprising a compound of claim 1 or claim 17 and a pharmaceutically acceptable carrier. As set forth above, claim 1 and claim 17 cover an identical compound genus. Therefore claims 9 and 22 are duplicates.
Claim 19 is objected to as being a substantial duplicate of claim 15. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 15 recites:
PNG
media_image4.png
83
591
media_image4.png
Greyscale
Claim 19 recites:
PNG
media_image5.png
72
583
media_image5.png
Greyscale
Therefore claims 15 and 19 are duplicates.
Claim 20 is objected to as being a substantial duplicate of claim 16. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 16 recites:
PNG
media_image6.png
71
586
media_image6.png
Greyscale
Claim 20 recites:
PNG
media_image7.png
72
587
media_image7.png
Greyscale
Therefore claims 16 and 20 are duplicates.
Claim 21 is objected to as being a substantial duplicate of claim 18. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 18 recites:
PNG
media_image8.png
45
584
media_image8.png
Greyscale
Claim 21 recites:
PNG
media_image9.png
45
582
media_image9.png
Greyscale
Therefore claims 18 and 21 are duplicates.
Appropriate correction is required.
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 5, 17, and 22 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 5 recites the limitation “R6a is -C(O)Z2” on page 10. There is insufficient antecedent basis for this limitation in the claim. The variable R6a no longer has antecedent basis in claim 1 due to the amendment cancelling that subject matter.
Therefore claim 5 is rejected as indefinite.
Claim 17 recites the limitations:
“R4a is -NR6aR6b” on page 15;
“R4b is selected from the group consisting of hydrogen and C1-C6 alkyl” on page 15;
“R6a is selected from the group consisting of…S(=O)(=NZ5)NZ3Z4” on page 16;
“R6b is selected from the group consisting of hydrogen and C1-C6 alkyl” on page 16.
There is insufficient antecedent basis for these limitations in the claim. The variables R4a, R4b, R6a, and R6b no longer have antecedent basis in claim 17 due to the amendment cancelling -CR4aR4b from the definition for Y1.
Claim 22 depends from claim 17 and fails to resolve the issues identified above. Therefore claims 17 and 22 are rejected as indefinite.
Allowable Subject Matter
Claim 1 is objected to due to a minor informality but is otherwise allowable. Claims 3, 6-7, and 9 depend from objected to claim 1 and are also allowable. Claims 8, 15-16, and 18 are allowed.
Conclusion
Claims 1 and 19-21 are objected to. Claims 5, 17 and 22 are rejected. Claims 3, 6-9, 15-16, and 18 are allowable.
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 Kyle Nottingham whose telephone number is (571)270-0640. The examiner can normally be reached M-F from 10:00 am - 6:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571) 270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/K.N./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
Prosecution Insights