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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-5) and the species
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in the reply filed on 4 November 2025 is acknowledged. Applicant claims this compound reads on Claims 1-5. The Examiner respectfully disagrees. Claim 2 requires that variables R1 and R3 come together to form a ring system, which this compound does not contain. A search for the claimed compound retrieved prior art (See STN Search, Search Notes). The search was then stopped.
Claims 2 and 6-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4 November 2025.
Claims 1 and 3-5, submitted on 17 May 2023 represent all claims currently under consideration.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
This application is a 371 of PCT/US2021/060558, filed 23 November 2021, which claims priority to provisional US 63/117,432, filed 23 November 2020. The effective filing date is 23 November 2020.
Information Disclosure Statement
Two Information Disclosure Statements (IDSs), submitted on 17 May 2023 and 26 November 2024, are acknowledged and have been considered.
Claim Rejections - 35 USC § 112(b)
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 and 4 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 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: Variable R2 is not defined in the limitations of Claim 1 other than when it forms a ring system with variable R1. The claim is indefinite because it is unclear what substituent is placed at variable R2 when variables R1 and R2 do not come together to form a ring system. Claim 4 is rejected as indefinite as it depends on an indefinite claim without resolving the underlying issue of indefiniteness.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN RN 4512-00-9 (Entered STN: 16 November 1984).
STN RN 4512-00-9 has the structure
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which is identical to the compound of Claim 3 of the examined application, and has variable R1 as H and variable R3 as oxygen.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tripathi (Bioorganic Chemistry, 85, 2019, 82-96).
Tripathi discloses several compounds which meet the limitations of the examined application.
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, which is identical to the compound of Claim 3 of the examined application, has variable R1 as H and variable R3 as oxygen, is used as an intermediate in synthesis (Scheme 1, Page 84).
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(Scheme 1) have variable R1 as substituted aliphatic groups and variable R3 as oxygen.
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(Figure 1, Page 83) have variable R4 as substituted heteroalkyl group.
Claims 1 and 3-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Srivastava (US 2019/0330165; Publication Date: 31 October 2019).
Srivastava (See IDS, 26 November 2024) discloses compositions, methods and kits that can be used to reduce cell viability, induce apoptosis, and inhibit cell proliferation, such as for the treatment of cancer (Abstract). In an embodiment, the compound is
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(Paragraph 0010). This compound is identical to the compound claimed in Claims 3 and 5 of the examined application. In an embodiment, the compound is
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(Paragraph 0011), which has variable R1 as H and variable R3 as double bonded S. In an embodiment, the compound is
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(Paragraph 0015), which is identical to a compound claimed in Claims 3 and 5 of the examined application. In an embodiment, the compound is
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(Paragraph 0016), which has variable R4 as unsubstituted heteroalkyl group. Additional embodiments include
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(Paragraph 0037), which has variable R1 as substituted aliphatic group and variable R3 as double bonded oxygen. In other examples, the compound is
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(Paragraph 0162), which has variable R1 as substituted aliphatic group and variable R3 as double bonded sulfur. Embodiments comprise a pharmaceutical composition comprising a compound described herein and a pharmaceutically acceptable carrier (Paragraph 0024).
Conclusion
Claims 1 and 3-5 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILLIP MATTHEW RZECZYCKI whose telephone number is (703)756-5326. The examiner can normally be reached Monday Thru Friday 730AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P.M.R./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625