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 .
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.
Election/Restrictions
Applicant's election with traverse of election of species in the reply filed on 13 January 2026 is acknowledged. The traversal is on the ground(s) that search of the elected species would likely uncover art of interest to other species. This is not found persuasive because the species are not regarded as similar structure (see page 4-7 of the office action of 11/14/15).
The requirement is still deemed proper and is therefore made FINAL.
Applicants provided a compliant species as follows
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Examiner did not find prior art for applicant’s elected species. Therefore, Markush search was extended to the full scope of independent claim 1. No prior art was found. Therefore, election of species requirement is withdrawn.
Double patenting art was found for co-pending applications no. 19/253,018.
Claims 1-11 and 16-24 are examined in this office action.
Current Status of 18/259,112
This Office Action is in response to the amended claims of 06/23/2023.
Claims 1-9, 11 and 16 are currently amended; claims 10 are original; and claims 17-24 are new. are examined in this office action.
Claims 1-11 and 16-24 are examined in this office action.
Priority
Effective filing date is 12/24/2021.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 09/25/2023, 07/22/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-11 and 16-24 are provisionally rejected on the ground of anticipatory nonstatutory double patenting as being anticipated over claims 1,3-4, 6, 8-10 and 15-24 of co-pending Application No 19/253,018 (reference application). Instant claims of 06/23/2023 was used to write this rejection.
Although the claims at issue are not identical, they are not patentably distinct from each other because Reference claims 1,3-4, 6, 8-10,15-18 and 24 discloses compound of formula I
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and pharmaceutically acceptable salt, where A1, A2 and A5 are N: A4 is CR5 and N where R5 is H; A6- is CR5 wherein R5 is halogen, C1-C6 alkyl, C2-C6 alkenyl, and C2-C6 alkynyl; R3 is H; and R4 is C1-C6 alkyl same as instant claims 1-11 and 16-18.
Reference claims 10 (page 10, lines 23-24),18(page 17, lines 19-20), and 24(page 24, lines 25-26), discloses the compound (R)-4-( 4-(1-isopropyl-IH-pyrazol-5-yl)-7-(IH-pyrazol-5-yl)imidazo[ 1,5-b ]pyridazin-2-yl)-3-methylmorpholine same as instant claim 11(page 9, lines 15-16) thus claims 1-11 and 16-18 are anticipated.
Reference claims 19 ad 23 disclose method of treating or preventing ATR kinase mediated disease same as instant claim 19. Reference claims 20 discloses treatment of cancer same as instant claims 20. Reference claims 21-23 discloses combination therapy of compound of formula I with anticancer agent and radiotherapy same as instant claims 22-24.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed as written.
Examiner did not find prior art for independent claim 1. Close art of Bo et,al (US 20230295166) discloses the compound
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where the circled area depicts the difference with instant independent claim 1, where in R1 is H and there is a bicyclo moiety. A person skilled in the art would not be able to envision this structural difference hence Bo et. al. is a close art and not a prior art. Moreover, the publication date is after the priority date of current application.
Applicant is encouraged to draw the structure of compounds in claim 11 to avoid future 112 rejections.
U.S. Patent No. 12479848(not published) app no. 17/618,362 is not a double patenting art because reference claims are directed to compounds of formula
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where A6 is CH which is not as same as formula I
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of instant claim wherein R1 is halogen, an optionally substituted C1-C6 alkyl, an optionally substituted C3-C6 cycloalkyl, an optionally substituted C2-C6 alkenyl, or an optionally substituted C2-C6 alkynyl.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rehana Ismail whose telephone number is (703)756-4776. The examiner can normally be reached Monday-Friday 9:00am-5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew D Kosar can be reached at (571)272-913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.I./Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625