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 .
According to paper filed on Jan. 5, 2026, the applicants have amended claim 1 to limit the values of variables X1-R5 and R6 to form 7-membered ring in compounds of formula I (in response to election of species requirement). The applicants have also canceled claims 10, 17, 24 and 60-61, amended claims 1, 25 and 32 and furthermore, have added new claims 118-119.
Claims 1, 15, 21, 25, 32, 34, 40-42, 58-59, 62, 69, 72-73, 81 and 118-119 are pending in the application.
Claim Rejections - 35 USC § 112
4. 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, 15, 25, 32, 34, 40-42, 58-59, 62, 69, 72-73, 81 and 119 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.
In independent claim 1, applicants have amended claim 1 to limit the values of variables X1-R5 and R6 to form 7-membered ring fused to phenyl ring in order to form a bicyclic ring. According to this bicyclic ring, variable X1 represents only SO2, variable X2 is C and variable R9 is absent. However, according to claim 1, variable X1 can also represent S, SO or SONH in addition to SO2; variable X2 can represent N in addition to C and variable R9 is defined to have various values. Therefore, it is not clear what are the actual values of these variables X1, X2 and R9 in claim 1.
In claim 72, BAF complex-related disorders are not defined.
Claim 119 recites the limitation "nitrogen for the value of variable X2" in claim 1 (see compounds 407, 733, 749 and 769). There is insufficient antecedent basis for this limitation in the claim.
Claim 119 recites the limitation "deuterium for the value of variable Rx1" in claim 1 (see compounds 715, 717, 741 and 807). There is insufficient antecedent basis for this limitation in the claim.
Claim 119 recites the limitation "variable R9" in the bicyclic ring in claim 1 (see compound 648 on page 85). There is insufficient antecedent basis for this limitation in the claim.
Double Patenting
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, 15, 21, 25, 32, 34, 40-42, 58-59, 62, 69, 72-73, 81 and 118-119 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 8, 10-12, 14-15, 20-27, 30-32, 42-46 and 58-102 of U.S. Patent No. 12,139,487. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one skilled in the art to prepare instant compounds when variableX1 represents O, variable X2 represents C, variable Z1 is absent and variable Z2 represents CH2 in the compounds of formula I for treating cancer and viral infections of the cited patent and to treat cancer and viral infections with reasonable expectation of success since these specific compounds are disclosed in claim 87 of the cited patent.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The instant compounds and their use for treating cancer and viral infections are allowable over the prior art since they are neither disclosed nor obvious over the prior art. In the art, Schiller (U.S. Patent 12, 139, 487) discloses compounds for treating cancer and viral infections. The compounds 6-10 (see table 1 in columns 17-18) do anticipate the instant compounds. However, this reference is inventors own work and furthermore, does not constitute a prior art reference since the effective filing date (May 11, 2022) of this patent is much later than the effective filing date (Nov. 10, 2020) of the instant application).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARANJIT AULAKH whose telephone number is (571)272-0678. The examiner can normally be reached Monday-Friday 7:00-3:30.
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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621