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 .
CONTINUING DATA
This application is a 371 of PCT/CN2022/088179 04/21/2022
FOREIGN APPLICATIONS
CHINA 202110442975.X 04/23/2021
This office action is in response to Applicant’s amendment submitted August 3, 2026. Claims 1, 3-7, 9-12 are pending.
Claims 5-7 and 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 6, 2026.
Applicant’s election of the compound shown on page 31 of the remarks submitted April 6, 2026 is acknowledged. Applicant elected the species with traverse but did not distinctly and specifically point out the supposed errors in the election of species requirement.
The rejection of claims 1 and 4 under 35 U.S.C. 102(a)(1) as being anticipated by Mackman is withdrawn because Mackman does not teach R1 as recited in amended claim 1.
The rejection of Claim(s) 1-4 and 8-9 under 35 U.S.C. 102(a)(1) as being anticipated by CN112778310A is withdrawn. A certified copy of the foreign priority application was submitted August 3, 2026, and CN112778310A is not prior art.
The rejection of claim(s) 1-4 and 8-9 under 35 U.S.C. 102(a)(1) as being anticipated by CN113735862A is withdrawn. A certified copy of the foreign priority application was submitted August 3, 2026, and CN113735862A is not prior art.
The rejection of claim(s) 1-4 and 8-9 under 35 U.S.C. 102(a)(2) as being anticipated by Xie (US 2023/0219993) is withdrawn in view of the Statement of Common Ownership under §102(b)(2)(C).
The terminal disclaimer filed August 3, 2026, has been approved and is sufficient to overcome NSDP rejections over 11,919,923 and 12,351,599.
The following rejection is maintained.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3-4, and 8-9 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Zhang (US 2024/0317754A1, filed December 30, 2020, of record).
Zhang teaches the following compound on page 5:
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This is a compound of Formula I wherein R1 is C6 cycloalkyl, and is the elected species. A pharmaceutical composition containing a pharmaceutically acceptable carrier is disclosed in claim 15.
Response to Arguments
Applicant argues that Zhang does not support the C6 cycloalkyl embodiment relied upon in the rejection and so it is not afforded its December 30, 2020 priority date with respect to the claimed subject matter. This argument is not persuasive because a U.S. patent document is effective as prior art as of the filing date of the earliest application to which benefit or priority is claimed and which describes the subject matter relied upon. CN 202011613943.3 claims compounds wherein the position corresponding to the above C6 cycloalkyl embodiment is C3-C10 carbocyclic alkyl, which includes C6. Thus, the C6 cycloalkyl is described in CN 202011613943.3.
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It is noted that Zhang and CN 202011613943.3 also describe several other compounds which anticipate the current claims, so even if Applicant successfully argued that CN 202011613943.3 does not describe the C6 cycloalkyl compound, Zhang would still be used in an anticipation rejection. This explanation is made for Applicant’s convenience and is not a new ground of rejection.
Conclusion
Claim 1 is not yet in condition for allowance. In the interest of compact prosecution, the examiner would like to note that withdrawn claim 5 does not require all the limitations of claim 1, so it would not be eligible for rejoinder when claim 1 is found to be allowable. Withdrawn claims 5-7 and 10-12 are all “use” claims which would be rejected under 101 and 112b.
THIS ACTION IS MADE FINAL. 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 LAYLA D BERRY whose telephone number is (571)272-9572. The examiner can normally be reached 7:00-3:00 CST, M-F.
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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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/LAYLA D BERRY/Primary Examiner, Art Unit 1693
