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 Claims
Claims 23, 24, 26-28, and 30-36 are pending in the instant application. Claims 26-28 and 30-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 23-24 is contained herein.
Status of Rejections
35 USC § 102
The rejection of claims 23-24 is maintained.
Applicant’s arguments, see Remarks, filed 4/14/2026, with respect to the rejection set forth in the Non-Final Office Action mailed 10/16/2025, have been fully considered but are not found persuasive.
To reiterate the rejection of record; claims 23-24 are rejected under 35 U.S.C. 102(a)(2) as being anticipated over Chen et al. (WO 2021/046407-previously mentioned of record).
Chen et al. teach the following compound and compositions thereof which anticipate the claims (see page 216, compound I-178 of related provisional application 62/897223 and page 95 for compositions thereof):
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which corresponds to compound I-I in the instant claims. Thus the claims are anticipated.
Applicant has argued that both Chen and the instant application claim priority to the same provisional application 62/897223 and thus Chen does not qualify as prior art. The examiner respectfully disagrees. Applicants are reminded of the following regarding priority of the instant claims (see office action 11/5/2024):
This application claims the benefit of earlier filed U.S. Provisional Application Nos. 62/897,223, filed on September 6, 2019; 62/932,404, filed on November 7, 2019; 63/001,016,filed on March 27, 2020; 63/004,290, filed on April 2, 2020; 63/004,319, filed April 2, 2020,and 63/004,301, filed on April 2, 2020. Benefit for provisional applications 62/897,223 and 62/932,404 is not accorded since subject matter disclosed within the instant application is not supported (e.g. the elected species and compounds embracing a benzoazepine core). The claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. In re Ziegler, 992 F.2d 1197, 1200, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993); Kawaiv.Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).
Note again that the claims have the earliest priority date of 3/27/2020 since all of the claimed species embracing a benzoazepine core are not supported in the provisional applications. Thus, Chen is still applicable as prior art the rejection is maintained.
Conclusion
No claims are allowed.
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 BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
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