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 .
Claim Status
Claims 8-11 and 14 are pending. Claims 8-10 and 14 are allowed. Claim 11 is rejected.
Response to Amendment
Applicant’s amendments have overcome the previously presented objections and/or rejections over claims 8-10 and 14. Claim 11 is rejected as set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11 recites compounds outside of the scope of independent claim 8 such as the following which possess substituents or heteroatoms on the ring corresponding to
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140
296
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which are not provided for.
For an example of improper substituents:
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204
866
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,etc.
For an example of unprovided for heteroatoms:
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192
204
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,
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200
210
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, etc.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Closest Prior Art
Regarding instant claims 8, 9, and 11 the closest prior art is WO 2021231526 A1 by Hoang et al. The prior art discloses the following compound on page 72:
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292
686
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.
The prior art compound is analogous to compounds of instant formula III where R1 is naphthyl, L2 is -O(RL-1)n1-, RL-1 is C3 alkylene, n1 is 1, and R3 is 5-membered heterocycle containing 1 N heteroatom substituted by one R3-2, R3-2 is C1 alkyl. The prior art differs from the instant compounds in that it lacks the alkyl substituent represented by R4 and has a vinyl substituent for R2 where the instant claims only allow for -CN, C1-3 alkyl or halogen.
Regarding instant claim 11, Hoang et al. disclose the following compound on page 68:
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364
668
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.
The prior art compound is analogous to instant compound 25 however it contains a vinyl substituent where the instant compound is unsubstituted:
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174
216
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.
Hoang et al. provide no motivation or guidance for preparing the prior art compounds without the vinyl substituents therefore, the prior art neitehr anticipates nor renders obvious the instant claims.
The closest prior art with regards to instant claim 10 is WO 2022/047093 A1 which discloses the compound of Example 11 shown below (pages 99-100):
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278
296
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.
The prior art compound is analogous to compounds of instant formula IV where R1 is naphthyl substituted by R1-1, R1-1 is -ORc, Rc is hydrogen, L2 is -O(RL-1)n1-, RL-1 is C3 alkylene, n1 is 1, and R3 is 5-membered heterocycle containing 1 N heteroatom substituted by one R3-2, R3-2 is C1 alkyl. The prior art differs from the instant compounds in that it lacks the alkyl substituent represented by R4 has a vinyl substituent for R2 where the instant claims only allow for -CN, C1-3 alkyl or halogen, and has two halogen substituents on the quinazoline ring.
An additional relevant reference is WO 2022/248885 A2 which discloses the following compound that is identical to compound 48 of instant claim 11 (page 33):
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204
254
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.
This disclosure does not anticipate the instant claims as the WIPO was filed May 27th, 2022 and the compound above was not disclosed in the priority documents.
Allowable Subject Matter
Claims 8-10 and 14 are allowed.
Conclusion
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.
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/A.A.C./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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