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 .
Status of Claims and Response to Amendments
The amendments filed June 11, 2026 have been acknowledged and entered. Claims 1-37 are pending.
Election/Restriction
The present examination is based on Applicant’s election without traverse of Group I (presently claims 1-18 and 37) in the response filed October 22, 2025. Applicant remarks filed June 11, 2026 overcame the art rejections set forth in the previous office action. The search has thus been expanded to the full scope of amended claim 1 and art was found.
Claims 19-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 22, 2025.
Withdrawn Rejections
Applicant is notified that any outstanding rejection or objection that is not expressly maintained in this Office Action has been withdrawn or rendered moot in view of Applicant’s amendments and/or
remarks.
Claim Objections
Claims 1, 6-13 and 15-17 are objected to for the following informalities:
Claim 1 recites the proviso (b) when X and Y are both S: when R4 is propyl group, R3 cannot be chloride. The claim is objected to because this proviso is unnecessary since the claim does not permit R3 to be a halo. It is suggested the claim be amended to delete the proviso “when R4 is propyl group, R3 cannot be chloride”.
Claims 1 and 7 are objected to for being in improper Markush format. The claims recite “and pharmaceutically acceptable salts thereof” and should instead recite “or a pharmaceutically acceptable salt thereof”. A “Markush” claim should recite a list of alternatively useable members. See MPEP 2117.
Claims 6-13 and 15-17 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.
Rejections Necessitated by Applicant Amendment
Claim Rejections - 35 USC § 112b
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.
Claim 4-5, 14, 18 and 37 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. The claims are indefinite for the reasons that follow:
Claim 4 recites the limitation “phenyl is optionally substituted…and the pyrrolidinyl is optionally substituted” in lines 4-5. There is insufficient antecedent basis for this limitation in the claim because the claim depends from claim 1 which recites R3 is phenyl or cycloheteroalkyl and does not recite that phenyl or cycloheteroalkyl are optionally substituted. Claim 1 should be amended to include the possible optional substituents on R3. Claim 5 depends from claim 4, does not cure this deficiency, and is therefore also indefinite. Claims 14 and 37 depend from claim 1 and recite compounds of formula (I) wherein R3 is substituted (see e.g. 6-tert-butyl-5-(3,4-dichlorophenyl)-4-phenoxythieno[2,3-d]pyrimidine; pictured below) and therefore are also indefinite.
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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.
Claim(s) 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arendsen et al. (WO 00/75175 A1)(hereinafter “Arendsen”).
Arendsen teaches 6-ethyl-4-(2-pyridinylthio)thieno[2,3-d]pyrimidine and 6-ethyl-4-[(2-methylethyl)thio]thieno[2,3-d]pyrimidine (page 105, Examples 3 and 4; pictured below for convenience) which correspond to instant formula (I) wherein X and Y are each S; R1 is H; R2 is unsubstituted C3 alkyl or pyridyl; R3 is H; and R4 is an unsubstituted C2 alkyl.
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Claim(s) 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Trattnig et al. (J of Biological Chemistry 2012, Vol 287, No. 30, 25241-25254)(hereinafter “Trattnig”).
Trattnig teaches compound TH13 (Figure 1; pictured below for convenience) which corresponds to instant formula (I) wherein X and Y are each S; R1 is H; R2 is unsubstituted C1 alkyl; R3 is H; and R4 is an unsubstituted C1 alkyl.
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Claim(s) 1-3 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Edie et al. (US5,137,879)(hereinafter “Edie”).
Edie teaches 5,6-dimethyl-4-[(4-fluorophenyl)-thio]furo[2,3-d]pyrimidine (col 13, Compound 56; pictured below for convenience) which corresponds to instant formula (I) wherein X is S; Y is O; R1 is H; R2 is phenyl; R3 is unsubstituted C1 alkyl; and R4 is an unsubstituted C1 alkyl.
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Claim(s) 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chemical Abstract Services (registry number (RN) 2313633-64-4, entered 2019; RN 2316494-91-2, entered 2019; and RN 1914414-58-6, entered 2016)(hereinafter “CAS”)
CAS teaches RN 2313633-64-4 and RN 2316494-91-2 (pictured below for convenience) which correspond to instant formula (I) wherein X and Y are each S; R1 is H; R2 is C1 alkyl; R3 is phenyl substituted with halo or C2 alkyl; and R4 is an unsubstituted C1 alkyl or C2 alkyl.
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CAS teaches RN 1914414-58-6 (pictured below for convenience) which correspond to instant formula (I) wherein X and Y are each S; R1 is H; R2 is phenyl substituted with halo; R3 is H; and R4 is an unsubstituted C1 alkyl.
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Allowable Subject Matter
Claims 4-5, 14 and 37 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 6-13 and 15-17 are objected to as noted above.
Conclusion
No claim is allowed.
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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August 20, 2026
/K.S.M./Examiner, Art Unit 1624
/BRUCK KIFLE/Primary Examiner, Art Unit 1624
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