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 .
Status of the Claims
Claims 1-3, 8, 10-13, 18-19, 21-22, 29-30, 35-36, 40, and 43-45 are pending. Claims 2-3, 18, 21, 35-36, 40, and 44-45 are withdrawn. Claims 1, 8, 10-13, 19, 22, and 30 are rejected. Claims 29 and 43 are objected to.
Information Disclosure Statements
The Information Disclosure Statements (IDS’s) from 7/24/2023 and 5/22/2025 were considered by the Examiner.
Election/Restrictions
Applicant’s election without traverse of Group I and the species:
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, in the reply filed on 12/23/2025 is acknowledged.
Claims 1, 8, 10-13, 19, 22, 29, 30 and 43 embrace Applicant’s elected species and are therefore under Examination. The elected species is allowable. As per MPEP 803.02, “Following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability.” Non-elected species have been discovered incidental to the search and are presented below in the interest of compact prosecution. Additionally, claims 1, 8, 10-13, 19, 22, 29, 30 and 43 have been searched in full. Claims 22, 29, 30, and 43 have been found free of the art.
Claims 2-3, 18, 21, 35-36, 40, and 44-45 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 43 is objected to because on p. 12, Compound 102 and Compound 105 have periods after them. Examiner requests the removal of said periods to overcome this objection.
Claim Rejections - 35 USC § 112
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, 10, 11, 12, 19, 22 and 30 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, line 4, recites “-N-“ as an option for “L”. Nitrogen is trivalent and as written: “-N-“ only indicates nitrogen having two connections. It is unclear what Applicant intended to bond to nitrogen in the available third location. Examiner recommends deleting this option for “L”.
Claim 1, line 5, recites “- -C(=O)-“ as an option for “L”. It is unclear what Applicant intended from the dashed line/double dash. For example, the instant specification paragraph [0115] recites the following (arrow added by Examiner):
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, wherein no options have the double dash. Examiner recommends clarifying if one of the dashes was intended to be omitted or to be another atom.
Claims 10, 11, 12, 19, and 22 are rejected for depending on an indefinite claim (instant claim 1) and failing to remedy its deficiencies.
Claim 11 recites the limitation "[t]he compound of claim 9". There is insufficient antecedent basis for this limitation in the claim because instant claim 9 has been cancelled. Examiner recommends correcting dependency of claim 11 to remedy the lack of antecedent basis. In the interest of compact prosecution and in light of prior art, Examiner has interpreted claim 11 as depending from pending claim 1.
Claim 12 recites the limitation "[t]he compound of claim 9". There is insufficient antecedent basis for this limitation in the claim because instant claim 9 has been cancelled. Examiner recommends correcting dependency of claim 12 to remedy the lack of antecedent basis. In the interest of compact prosecution and in light of prior art, Examiner has interpreted claim 12 as depending from pending claim 8.
Claim 30 is rejected because it refers to “Compound 4, 5, 6, 8, 26, 91, and 96” of the instant specification. A claim should particularly point out and distinctly claim the subject matter which the applicant regards as his invention and, under modern claim practice, stand alone to define the invention. MPEP 2173.05(s) states “Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience.” Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993)”. Examiner recommends inserting the actual structures of compounds 4, 5, 6, 8, 26, 91, and 96 into the body of claim 30 to overcome this rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 12 incorrectly depends from claim 9, but as described supra, Examiner is examining as though dependent on claim 8. In lines 2-3 of claim 12, “3 to 6 membered heteroaryl” is listed as an option for “A1”. This definition does not correctly depend nor further limit the “A1” definition in independent claim 1, which allows for “A1” to be “5-12 membered heteroaryl”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 30 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 30 depends from claim 29, wherein claim 29 recites a compound of the structure of Formula (Ia):
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. Claim 30 includes compound 26 (arrow added by Examiner):
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, wherein compound 26 does not correctly depend from instant Formula (Ia). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(1 of 4) Claims 1, 11, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1469290-28-5 (which entered the STN database on 11/4/2013).
Regarding instant claims 1, 11 and 19, CAS Registry No. 1469290-28-5 is drawn to the following structure:
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, which is embraced by a compound of instant Formula (I):
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, wherein L = -NH2, R1= H; Aa, Ab, and A1= not present; A2 = pyrazole,
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; Ac is not present; A3 = substituted C6 aryl:
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.
(2 of 4) Claim(s) 1, 8 and 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 404874-28-8 (which entered the STN database on 4/9/2002-art used for restriction mailed on 10/23/2025).
Regarding instant claims 1, 8, and 11-12, CAS Registry No. 404874-28-8 is drawn to the following structure:
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, which is embraced by a compound of instant Formula (I):
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, wherein Ac = not present; A3 = substituted C6 aryl:
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; A2 = pyridine; L = NH, R1 = H; Aa, Ab = not present; A1 = substituted 5 membered heteroaryl:
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.
(3 of 4) Claim(s) 1 and 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 3599-73-3 (which entered the STN database on 11/16/1984).
Regarding instant claims 1 and 10-11, CAS Registry No. 3599-73-3 is drawn to the following structure:
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, which is embraced by a compound of instant Formula (I):
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, wherein L = single bond; Aa = substituted C1 alkylene:
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; Ab and A1 = not present; A2 = pyridine; A3 = substituted C1 alkyl:
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.
(4 of 4) Claim(s) 1, 8, 10, 11, 12 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1253574-48-9 (which entered the STN database on 11/18/2010).
Regarding instant claims 1, 8, 10, 11, 12 and 13, CAS Registry No. 1253574-48-9 is drawn to the following structure:
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, which is embraced by a compound of instant Formula (I):
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, wherein L = -NH-; Aa = C2 alkylene; Ab= not present; A1 = C1 alkoxy; “L, Aa, Ab, and A1 together” =
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; Ac = not present; A3 = C1 alkyl; A2 =
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(paragraph [0014] of the instant specification allows for A2 to be substituted with halogen).
Closest Prior Art
The closest prior art to claim 22 is CAS Registry No. 331451-11-7 (which entered the STN database on 4/16/2001). CAS Registry No. 331451-11-7 is drawn to the following structure (arrow added by Examiner):
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. The prior art compound differs in the location of the added arrow, wherein A2, as claimed may be pyrazole and the prior art compound has a bi-substituted tautomer. The instant claims are not drawn to tautomers of a compound of instant Formula (I). It would not have been obvious to a PHOSITA (nor anticipated) to arrive at a bi-substituted tautomer of the prior art to satisfy the instant claims. Additionally, prior to the effective filing date of the instant claims, the prior art compound shown supra was not taught as a JMJD3 inhibitor, as are the instant compounds (disclosed in the instant specification, para. [0004]).
The closest prior art to instant claims 29, 30 and 43 is CAS Registry No. 1391925-44-2 (which entered the STN database on 9/20/2012). Regarding instant claim 29, CAS Registry No. 1391925-44-2 is drawn to the following structure:
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, which is similar to a compound of instant Formula (Ia):
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, wherein L = -NH-; Aa = C1 alkylene; Ab = -C(=O)-; A1 = hydroxyl; A2 =
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(paragraph [0014] of the instant specification allows for A2 to be substituted with halogen). The prior art differs from instant claim 29 in the location of A3, wherein the instant claims do not allow for the prior art’s:
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. Regarding instant claims 30 and 43, which are drawn to a variety of species free of the prior art, the prior art compound shown directly supra is also the closest prior art.
Allowable Subject Matter
Claim 29 is 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. See above description of closest prior art for claim 29.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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/MEGHAN C HEASLEY/ Examiner, Art Unit 1626