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 .
DETAILED ACTION
Status of the Claims
Claims 1, 4-10, and 19-22 are pending. Claims 5 and 7-10 are withdrawn from further consideration as being directed to nonelected species until a generic claim has been found allowable. Claims 1, 4, 6, and 19-22 are examined on their merits.
35 U.S.C. § 102 Rejections Overcome by Amendment
Applicant’s amendments in the response filed on May 1st 2026 are acknowledged. Applicant has amended claim 1 to require that the ferroptic pharmacophore of the compound comprises a terminal alkyne attached to a thiazole and the HDAC inhibitor pharmacophore comprises a hydroxamic acid metal-binding group. As Fan does not teach compounds with a terminal alkyne attached to a thiazole, Applicant has overcome the 102 rejections over claims 1 and 3, and said rejections are thereby withdrawn.
35 U.S.C. § 101 Rejections Overcome by Argument
Applicant’s arguments in the response filed on May 1st 2026 are acknowledged. Applicant argues that claims 19 and 20 are incorporated into a practical application because:
The compounds are novel and not found in nature.
The method is directed towards the killing of cancer cells and thereby achieves a concrete result.
Applicant’s argument is found persuasive. The method of claims 19 and 20 is not directed towards a mere laboratory experiment of contacting the cells with a compound, but a practical application of killing cancer cells, which can be further utilized in either a treatment method or the determination of a treatment method. Accordingly, the 101 rejections over claims 19 and 20 are withdrawn.
35 U.S.C. § 112(b) Rejections Maintained
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 is 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.
Applicant’s amendments to claim 1 in the response filed on May 1st 2026 are acknowledged. Applicant has amended claim 1 to recite:
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107
627
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.
While said amendment addresses the concerns of the previous 112(b) rejection, in that the ferroptic pharmacophore and HDAC inhibitor are defined as a terminal alkyne attached to a thiazole, and a hydroxamic acid metal-binding group, respectively, the scope of the hybrid molecule of claim 1 is still not fully defined.
Further claims define the molecule to have a particular structure of Formula A:
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195
498
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(see Claim 4).
While this scope (and thus claim 4) is definite, in that the molecule has a fully defined structure wherein all possible R groups are known. The scope of claim 1 is not fully defined, in that it does not contain a finite Markush group defined by particular chemical structures and functional groups, but instead any and all compounds containing both a terminal alkyne attached to a thiazole and a hydroxamic acid. As one of ordinary skill in the art could not reasonably determine the metes and bounds of claim 1, claim 1 is indefinite.
Allowable Subject Matter
Claims 1-4, 6, and 21-22 are free of the prior art.
Claims 21-22 are allowed.
Applicant has developed a series of bifunctional molecules that comprise both a ferroptotic pharmacophore and a histone deacetylase (HDAC) inhibitor pharmacophore. Applicant’s compounds are useful in the treatment of various cancers.
While compounds with the general activity of “compounds with both ferroptotic and HDAC inhibiting activity” are found in the art, including with applicant’s particular HDAC-inhibiting moiety of ‘hydroxamic acid,’ (see Fan (Fan et al., A Dual PI3K/HDAC Inhibitor Induces Immunogenic Ferroptosis to Potentiate Cancer Immune Checkpoint Therapy. Cancer Res 15 December 2021; 81 (24): 6233–6245)), applicant’s particular compounds, as well as the compound genus of claim 4, are not found in the art, and would not be predictable from the art. As claims 21-22 do not depend on the rejected claim 1, they are allowed.
Claims 4 and 6 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
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 Anthony Seitz whose telephone number is (703)756-4657. The examiner can normally be reached 7:30 AM ET - 5:00 PM ET M-F.
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/A.J.S./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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