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 .
DETAILED ACTION
This Office action is responsive to Applicant’s response to restriction requirement, filed July 17, 2026. As filed, claims 1-4, 6, 9-14, 17, 26, 31, 61, 80, 94,126,131,134, 136-138, 141, 143-144, 151, and 171 are pending in the instant application. Claims 5, 7, 8, 15, 16, 18-25, 27-30, 32-60, 62-79, 81-93, 95-125, 132, 133, 139, 142, 145-150, 152-170, are cancelled.
Priority
This application filed 07/17/2023 is a National Stage entry of PCT/US2022/012831 , International Filing Date: 01/18/2022 PCT/US2022/012831 Claims Priority from Provisional Application 63199694 , filed 01/18/2021.
Information Disclosure Statement
No information disclosure statement (IDS)has been filed in the instant application. Applicants are reminded of the duty to disclose anything believed to be material to the patentability of the instant application in accordance with 37 CPR 1.56.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-4, 6, 9-14, 17, 26, 31, 61, 80, 94, 126, 131, 134, 136-138, and 143-144, drawn to compounds of Markush formula I and compositions thereof in the reply filed on 07/16/2026 is acknowledged.
In response to a further requirement for the election of a single disclosed species, Applicants further elected, the compound T17, Table 1 page 26 of the specification of the present application (also reproduced below) wherein in Formula (I) the bond between atom 1 and atom 2 is a double bond, the bond between atom 9 and atom 11 is a double bond, the bond between atom 12 and X2 is a double bond and X2 is oxo, R2 is hydrogen, n is 0, and Y is -NR8R9, wherein R8 is hydrogen and R9 is
substituted acylc<12), 2,2-difluoropropionyl; and indicated that claims 1-4, 6, 9-12, 94, and 136 read the elected species.
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Applicants' elected species have been found not allowable due to the following rejections.
Claims 141, 151, and 171 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 13-14, 17, 26, 31, 61, 80, 137-138, and 143-144 are withdrawn from consideration as pertaining to non-elected species.
MPEP section 803.02 states: Following election, the Markush-type claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability.
If the elected species is found to be allowable, then the search and examination will be expanded by the Examiner to consider additional species and subgenera within the generic formula until: (1) An art rejection can be made, or (2) The genus claim is found to lack unity of invention, or (3) The claims have been searched in their entirety.
If the Markush-type claim is not allowable, the provisional election will be given effect and examination will be limited to the Markush-type claim and claims to the elected species, with claims drawn to species patentably distinct from the elected species held withdrawn from further consideration.
The instantly elected species was searched and examined. It was determined that the elected species was free of the prior art. For this reason, the search and examination was expanded within the Markush-type claim and to consider additional species and subgenera within the generic formula of instantly claimed compounds of formula in claim 1 wherein X2 is oxo, R2 is H, until a non-elected prior art species was found that anticipated or rendered obvious said claim.
As a result, Claims 1-4, 6, 9-12, 94, and 136 are examined herein.
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) 1-4, 6, 9-12, and 136 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fu et al. SO Organic & Biomolecular Chemistry (2014), 12(28), 5192-5200 (cited in PTO-892 mailed 4/16/2026).
The article by Fu discloses compounds 9-12 on Fig 3, page 5193:
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compounds
36 on Scheme 6 page 5194:
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which corresponds to the instantly claimed compounds of Formula (I) as claimed in which the bond between atom 1 and atom 2 is a double bond, the bond between atom 9 and atom 11 is a double bond, the bond between atom 12 and X2 is a double bond and X2 is oxo, R2 is hydrogen, n is 0, and Y is -COOMe ( disclosed in claim 136; RN 1616932-17-2 ) or Y is amido C ≤12 ( RN 1616932-29-6) and substituted amido C ≤12 RN 1616932-18-3 ; 1616932-19-4; instant claims 1-4, 6, 9-12, and 136).
Shown below are the compounds disclosed by the article by Fu as displayed in Registry file:
RN 1616932-17-2 CAPLUS
CN Ursa-1,9(11)-dien-28-oic acid, 2-cyano-3,12-dioxo-, methyl ester (CA
INDEX NAME)
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RN 1616932-28-5 CAPLUS
CN Ursa-1,9(11)-dien-28-oic acid, 2-cyano-3,12-dioxo- (CA INDEX NAME)
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RN 1616932-29-6 CAPLUS
CN Ursa-1,9(11)-dien-28-amide, 2-cyano-3,12-dioxo- (CA INDEX NAME)
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IT 1616932-18-3P 1616932-19-4P 1616932-20-7P
1616932-26-3P 1616932-30-9P
RL: PAC (Pharmacological activity); SPN (Synthetic preparation); THU
(Therapeutic use); BIOL (Biological study); PREP (Preparation); USES
(Uses)
(prepn. and anti-inflammatory activity of cyanoursolic acid derivs.)
RN 1616932-18-3 CAPLUS
CN Ursa-1,9(11)-dien-28-amide, 2-cyano-N-ethyl-3,12-dioxo- (CA INDEX NAME)
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RN 1616932-19-4 CAPLUS
CN Ursa-1,9(11)-dien-28-amide, 2-cyano-3,12-dioxo-N-(2,2,2-trifluoroethyl)-
(CA INDEX NAME)
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Claim Objections
Claim 94 is objected to as being dependent upon a rejected base claim.
Conclusion
Claims 1-4, 6, 9-12, and 136 are rejected. Claim 94 is objected to. Claims 13-14, 17, 26, 31, 61, 80, 137-138, and 141, 143-144, 151, and 171 are withdrawn from further consideration.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANA MURESAN whose telephone number is (571)-270-7587. The examiner can normally be reached on Monday through Friday, 8:30 am to 5:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
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