DETAILED ACTION
Claims 4, 5, 8, and 11-25 are currently pending in the instant application. Claims 4, 5, 8, 11, 12, 15-17, 19, 20, and 23 are rejected. Claim 4 is objected. Claims 13, 14, 18, 21, 22, 24 and 25 are withdrawn from consideration as being for non-elected subject matter.
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 with traverse of Group I and the species:
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in the reply filed on 11 December 2025 is acknowledged. The traversal is on the ground(s) that there is no undue burden to examine both groups I and II. This is not found persuasive because the inventions are independent and distinct because there is no patentable co-action between the groups and a reference anticipating one member will not render another obvious. Each group is directed to art recognized divergent subject matter which require different searching strategies for each group. Moreover, the examiner must perform a commercial database search on the subject matter of each group in addition to a paper search, which is quite burdensome to the examiner.
The requirement is still deemed proper and is therefore made FINAL.
According to MPEP 803.02, the examiner has determined whether the elected species is allowable. Applicants’ elected species is not allowable. Therefore, the search and examination has not been extended.
Claims 4, 5, 8, 11, 12, 15-17, 19, 20, and 23 have been examined to the extent that they are readable on the elected species.
Please note that claim 18 is withdrawn from consideration as it does not read on the elected species. While applicant states that the elected species reads on claim 5 of the instant claims formula (IV):
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as R2 is heteroaryl and R3 is aryl, see page 6 of the remarks:
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, it is noted that the elected species does not have R2 as heteroaryl as there is an alkylene between the heteroaryl of R2 and the N atom:
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. The heteroaryl of R2 is not directly attached to the formula (IV) N atom, but is attached via an alkylene. Therefore, claim 18 does not read on the elected species as R2 is not heteroaryl on the elected species. The elected species falls within claim 5 wherein R2 is alkylene-aryl and R3 is aryl, or wherein R2 is aryl, and R3 is alkylene-heteroaryl. Please note that “aryl” is defined in the instant specification, page 37, to include heteroaryl:
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Claim Objections
Claim 4 is objected to because of the following informalities: Claim 4 has “of of” in line 1. One instance of “of” should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 4, 5, 8, 11, 12, 15-17, 19, 20 and 23 are is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by TURLINGTON, MARK et al. Bioorg. Med. Chem. Lett. 2013, Vol. 23 (2013) 6172-6177 (IDS filed 5/31/2023).
TURLINGTON, MARK et al. discloses the compound: 17a on page 6175, see Table 1 with IC50 value of 0.051:
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which corresponds to applicant’s elected species of:
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. The compound 17a is a 3CLpro inhibitor that is the first sub 100nM inhibitor for the series and one of the most potent nonwarhead based SARS 3CLpro inhibitors to date (page 6176). TURLINGTON, MARK et al. discloses a second class of diamide SARS 3CLpro inhibitors such as the improved inhibitor 17a (page 6176). The compound 17a corresponds to applicant’s elected species as seen in instant claim 11
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. The compound 17a corresponds to formula (III) of claims 4, 12, 15, and 16:
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wherein R1’ is heteroaryl and R2 is aryl.
The compound 17a corresponds to formula (IV) of instant claims 5, 17, and 20 :
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wherein R2 is aryl and R3 is alkylene-aryl or alkylene-heteroaryl, or wherein R2 is alkylene-aryl and R3 is aryl. Please note the definition of “aryl” on page 37 of the specification as it includes heteroaryl:
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The compound 17a corresponds to formula (VI) of instant claims 8, 19, and 23:
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wherein R2 is aryl.
Claim(s) 4, 5, 8, 11, 12, 15-17, 19, 20, and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Registry No. 1473419-56-5, entered STN 14 November 2013.
Registry No. 1473419-56-5 is
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Registry No. 1473419-56-5 corresponds to applicant’s elected species as seen in instant claim 11
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. The compound of Registry No. 1473419-56-5 corresponds to formula (III) of claims 4, 12, 15, and 16:
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wherein R1’ is heteroaryl and R2 is aryl.
The compound of Registry No. 1473419-56-5 corresponds to formula (IV) of instant claims 5, 17, and 20 :
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wherein R2 is aryl and R3 is alkylene-aryl or alkylene-heteroaryl, or wherein R2 is alkylene-aryl and R3 is aryl. Please note the definition of “aryl” on page 37 of the specification as it includes heteroaryl:
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The compound of Registry No. 1473419-56-5 corresponds to formula (VI) of instant claims 8, 19, and 23:
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wherein R2 is aryl.
Registry number 1473419-56-5 is available as prior art as of 14 November 2014, the date it was indexed into the CAplus database.
See MPEP 2128: ELECTRONIC PUBLICATIONS AS PRIOR ART Status as a "Printed Publication" An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) Since this date represents the date that each compound entered the CAPlus database on STN, this represents the date that each compound was made accessible to the public.
The aforementioned compound anticipates the instantly claimed compounds: It is further noted that for the purposes of determining if a reference is a “printed publication” for the purposes of 102(b), MPEP 2128 states the following:
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where “prior art disclosures…on an on-line database are considered to be publicly available as of the date the item was publicly posted.” Since each of the database entries above lists the date that each compound was entered into the on-line database, the compounds were made publicly available as of that date in each citation, and the claims are anticipated.
Regarding the compositions of claim 12, 20 and 23 comprising the anticipatory compound and a carrier, the Registry entry for Registry no. 1473419-56-5 discloses a mass solubility in unbuffered water. This teaching in of water anticipates the claimed composition, wherein the compounds are present with a carrier (i.e., water).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L ANDERSON whose telephone number is (571)272-0696. The examiner can normally be reached Monday-Friday from 6am-2pm.
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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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/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626 ____________________ December 22 2025
Rebecca Anderson
Primary Examiner
Art Unit 1626, Group 1620
Technology Center 1600