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
Status of the Claims
Claims 1-18 are pending and are examined on their merits.
Information Disclosure Statement
The Information Disclosure Statements filed on December 10th 2025 are in compliance with the provisions of 37 CFR 1.97 and have been considered in full. A signed copy of references cited from the IDS is included with this Office Action.
35 U.S.C. §112(b) Rejections Overcome by Amendment
Applicant’s amendments in the response filed on January 16th 2025 are acknowledged. Applicant has amended the claims to recite methods of treatment rather than compounds/pharmaceutical compositions. Applicant has thereby overcome the 112(b) rejections for claims 1, 7-11, 14-15, and their dependent claims 2-6, 12-13, and 16 and said rejections are thereby withdrawn.
Minor Informalities
The amended claims 11 and 18 recite R1, R2, R3, R4, R5, and R6 in reference to the structure of formula (I), which recites R1, R2, etc. For the purpose of examination, each of the R groups will be treated as if the subscript is present. Claims 1, 6, and 11 recite hyphenated lists. In none of the lists is an “and” present before the last entry in the list, and thus the claims do not follow common grammatical rules. Appropriate correction is required.
35 U.S.C. § 112(b) Rejections Necessitated by Amendment
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 9 and 18 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.
Regarding claim 9, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 18 is indefinite for failing to further limit the method of claim 1. Claim 1 defines R1 as:
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Claim 18 recites:
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The corresponding R1 selection from claim 1 requires that R2 and R3 are selected from H and a linear, saturated C-1 to C8 carbon chain. As this does not allow for the substituent described in claim 18, claim 18 is not further limiting of claim 1 and is thereby indefinite.
35 U.S.C. § 112(a) Rejections Necessitated by Amendment
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 18 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 18 recites:
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Applicant recites no compounds wherein both R2 and R3 are a saturated carbon chain containing the substituent 1-H-imidazol-4-yl, but only compounds wherein one of the substituents is a saturated carbon chain containing the substituent 1-H-imidazol-4-yl and the other is H. Applicant’s written description is thereby inadequate to support claim 18 as written. Applicant will not be considered to have possession of the compound genus of claim 1, but only said genus wherein one of the substituents is a saturated carbon chain containing the substituent 1-H-imidazol-4-yl and the other is H.
35 U.S.C. § 103 Rejections Maintained
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The rejection of claims 1-17 under 35 U.S.C. 103 as being unpatentable over Medina (Medina et al., Journal of Medicinal Chemistry 2009 52 (23), 7765-7777) in view of Brown (Brown, Bioisosteres in Medicinal Chemistry, 2012) is maintained.
Applicant’s amendments, as well as the arguments in the response filed on January 16th 2026 are acknowledged. Applicant argues that Medina “teaches away” from a propanoyl group in the R1 location because the replacement of an acetyl group with a butyryl group was demonstrated to decrease biological activity. Applicant continues “In view of Medina, a person skilled in the art would not have selected alkyl-substituted compounds at R4, which are explicitly shown to be detrimental to biological activity with the reasonable expectation of achieving such improvements.”
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However, Medina’s demonstration that an acyl group demonstrates significant biological activity while a butyryl group does not is merely an indication that there is an optimal length to said alkyl chain, not that the optimal length is one carbon. With the knowledge that chain length provides such a significant change in biological activity, one of ordinary skill in the art would in fact be motivated to determine the optimal chain length, and the first-line experimental tool in such a case would be the common bioisosteric substitutions as described in Brown.
Regarding applicant’s amendment to the claims, amending all compound claims to be method claims, Medina remains relevant as Medina teaches the anticancer activity of the above compounds against U937, a human monocytic leukemia cell line that is known to be resistant to some particular drugs, such as cisplatin1, but generally recognized as chemosensitive in the field of acute myeloid leukemia research2. The 103 rejections of claims 1-17 thereby still apply and are maintained.
35 U.S.C. § 103 Rejections Reiterated
Claims 1-10 are directed to a compound of formula (I),
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One such compound is,
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Medina teaches the compound,
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(Medina, pg. 7767, Compound 17),
which differs from applicant’s compound only in the absence of a single carbon in the left-side chain (i.e. the replacement of a hydrogen group with a methyl group). One of ordinary skill in the art would have a reasonable expectation of success in developing applicant’s compound from Medina’s compound, because the bioisosteric replacement of a hydrogen with a methyl is one of the most common replacements in the field of drug discovery (Brown, pg. 17). Applicant’s compounds and claims 1-10 are thus prima facie obvious.
Claim 11 is directed towards a pharmaceutical composition containing the compounds of claim 1. Medina teaches the treatment of cancer with the above compounds (Medina, pg. 7768). In the administration to humans, the compounds would necessarily be administered in a pharmaceutical composition. Claim 11 is therefore prima facie obvious.
Claims 12-15 require that an additional anticancer agent is in the pharmaceutical composition with the compound of claim 1. As combination treatments are common in the field of oncology, a combination comprising both the compound and an additional anticancer agent would be considered obvious to try and claims 12-15 are prima facie obvious.
Claim 16 requires that the composition of claim 11 is in a form suitable to be administered intravenously, subcutaneously, intraperitoneally, or orally (i.e. either by mouth or injection). As oral administration and administration via injection are two of the most common forms of administration, one of ordinary skill in the art would find them obvious to try and claim 16 is prima facie obvious.
Claim 17 is directed towards a method of treating cancer with the pharmaceutical composition of claim 11. Medina teaches the treatment of cancer with the above compounds (Medina, pg. 7768), and claim 17 is therefore prima facie obvious.
Nonstatutory Double Patenting Rejections Maintained
Applicant’s arguments in the response filed on January 16th 2026 are acknowledged. Applicant argues that “in view of the amendments to claim 1 herein and the above arguments, applicant respectfully submits that the double patenting objection has been rendered moot. Reconsideration and withdrawal of the provisional double patenting rejection is respectfully requested.” However, applicant has amended both the instant and reference applications to recite methods of treating tumors. Furthermore, applicant has provided no argument regarding the bioisosteric substitution of a sulfone group with a carbonyl group. The nonstatutory double patenting rejections are thereby maintained.
Nonstatutory Double Patenting Rejections Reiterated
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 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 7-23 of copending Application No. 18/034,317 (reference application) in view of Brown (Brown, Bioisosteres in Medicinal Chemistry, 2012). The instant claims are directed to a compound of formula (I),
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wherein R1 is a carbonyl group.
The reference application is directed to compounds of formula (I),
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wherein R-1- is a sulfone group. As the replacement of a carbonyl group with a sulfone group is a common bioisosteric replacement used in the field of drug discover (Brown, pg. 20), applicant’s compounds could have reasonably been predicted from those of the reference application. Furthermore, both sets of compounds are intended as anticancer agents.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anthony Seitz whose telephone number is (703)756-4657. The examiner can normally be reached 7:30 AM ET - 5:00 PM ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Lundgren can be reached at (571)272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.S./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
1 For evidentiary support, see Singh: Singh RK, Singh SM, Sodhi A. Effect of cisplatin treatment of human monocyte cell line U937 on the induction of tumoricidal activity. Neoplasma. 1992;39(3):137-40
2 For evidentiary support, see Bossis, who describes such chemosensitivity (Bossis, pg. 1816): Bossis et al., The ROS/SUMO Axis Contributes to the Response of Acute Myeloid Leukemia Cells to Chemotherapeutic Drugs, Cell Reports, Volume 7, Issue 6, 2014, Pages 1815-1823