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 .
Current Status
This action is responsive to the amended claims of 04/16/2026. Claims 1-10 and 17-20 are pending and have been examined on the merits.
Priority
The effective filing date remains 12/31/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/16/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Examiner acknowledges receipt of and has reviewed the amendments and reply of 04/16/2026; no new matter is found.
The objections to claims 1-10 and 17-20 are withdrawn since Applicant has amended in line with Examiner’s suggestions.
Note, the Applicant’s amendment to claim 3 regarding variable R1 has introduced a 112(b)-indefiniteness rejection. The variable R1 has been struck from the text and replaced with variable R1. However, the variable R1 in the Formula (IV) has not been replaced. Now the variable R1 is undefined and no longer overlaps in scope with variable R1. Thus, a 112(b)-indefiniteness rejection is necessitated by amendment.
The 112(b) rejection of claim 2 is withdrawn since C1-6 alkyl has been replaced with C1-4 alkyl.
The 112(b) rejection of claim 3 is withdrawn since the variable Rm has been replaced with (R)m.
The 112(b) rejection of claim 5 is withdrawn since the claim has been amended to be independent.
The 112(d) rejection of claims 2-3 and 5 are each withdrawn for the same reasons applied to the 112(b) rejections above.
Response to Amendment
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.
Claim 3 is 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 3 recites Formula (IV) R1
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. There is insufficient antecedent basis for this limitation in the claim. The claim text does not recite or define R1; only variable R1 is defined in the claim text. Similarly, parent claim 1 only recites R1; there is no R1 in antecedent Formula (I). Since the variable R1 is undefined, the scope of Formula (IV) is unclear. Thus, the Formula (IV) does not align with the scope of parent claim 1. Further, while variable R1 has antecedent basis in the claim, the status of R1 in the structure of Formula (IV) is unclear. Therefore, the metes and bounds of the claim are undefined rendering the claim indefinite.
To overcome: please replace the R1 in the structure of Formula (IV) with variable R1.
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 3 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 3 recites Formula (IV) comprising variable R1. This Formula is outside of the scope of parent claim 1 since claim 1 Formula (I) does not comprise an R1 and claim 3 does not define R1. Thus, claim 3 does not properly further limit claim 1. 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.
Conclusion
Claim 3 is rejected.
Claims 1-2, 4-10, and 17-20 are allowable.
The following is an examiner’s statement of reasons for finding of allowable subject matter: the close art and unexpected results are discussed in the office action mailed 10/16/2025 at ¶19.
Note, the method claims 8-10 and 18-20 are drawn to treating and preventing cancer by administering the instant compounds. The instant Drawings provide data on inhibition of proliferation of various cancer cell lines. Depending on the dosage of the instant compound, the relative cell density compared to control approaches or is 0% (e.g., see Fig. 6A); i.e., treatment can achieve near to full inhibition. Under the broadest reasonable interpretation of the claims, the word “preventing” embraces prevention of proliferation and growth of cancers/tumors. Based on the guidance in the specification, the artisan would have a reasonable expectation of success in preventing growth, proliferation, and spread of cancers – i.e., preventing development of further tumors. Further, with a reasonable amount of experimentation, the artisan would reasonably expect treatment at early stages of tumor growth (e.g., Stage 0) to prevent the cancer from developing. Therefore, a reasonable number of embodiments of prevention are enabled by the instant disclosure.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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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/S.E.B./Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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