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 .
Priority
This application, filed 08/25/2023 Claims Priority from Provisional Application 63401490, filed 08/26/2022.
Status of Claims
Claims 1-2, 7-9, 12, 19-23, 25, 28-29, 35-37, 44-48, 66-68, 72-78, and 80-93 are pending as of the response filed on 2/23/26. Claims 3-6, 10-11, 13-18, 24, 26-27, 30-34, 38-43, 49-65, 69-71, and 79 have been canceled.
Applicant’s election without traverse of the species, compound I-469 in the reply filed on 2/23/26 is acknowledged:
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The elected species has been found to be free of the prior art. Therefore, search and examination have been extended to the full scope of species of formula I.
Claims 1-2, 7-9, 12, 19-23, 25, 28-29, 35-37, 44-48, 66-68, 72-78, and 80-93 were examined. Claims 2, 66, and 74-76 are rejected. Claims 1, 7-9, 12, 19-23, 25, 28-29, 35-37, 44-48, 67-68, 72-73, 77-78, and 80-93 are allowed.
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 2 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 2 depends from claim 1 and recites the compound as a compound of Formula I, however, this limitation is already required by 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.
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 66 and 74-76 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 66 refers to a compound in Table 1 or 2, however, the chemical structures or names of compounds in these tables are not present in the claim. The claim is indefinite, as the metes and bounds aren’t clear, since it is uncertain what compounds are encompassed by the claim. See MPEP 2173.05(s): 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) (citations omitted).
Claims 74-76 depend on claim 68 and recite “wherein the cancer…”. However, claim 68 doesn’t explicitly recite cancer as the condition to be treated. There is insufficient antecedent basis for this limitation in the claims.
Reasons for Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: the compounds of Formula I are novel and non-obvious over the prior art. PubChem, CID 126771985, publ. 4/25/2017; and Ukrorgsyntez Ltd., RN 1953269-78-7, publ. in CAS 7/17/2016 represent the most relevant prior art.
PubChem discloses the following compound:
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. This compound is structurally very similar to compounds of Formula I, having A1=morpholine; A2=pyrazolylene; R2=hydrogen; A3=
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. The only difference between the disclosed compound and compounds of Formula I is that the position corresponding to R5 for the above shown compound is n-propyl, which is prohibited for R5 of Formula I. Moreover, PubChem doesn’t disclose any biological activity or potential medicinal utility for the above shown compound, thus there is no reasoning for modifying the above shown compound to arrive at a compound of Formula I.
Ukrorgsyntez Ltd. discloses the following compound:
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. This compound is structurally very similar to compounds of Formula I, having A1=tetrahydrofuran; A2=pyrazolylene; R2=hydrogen; and A3=
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. The only difference between the disclosed compound and compounds of Formula I is that the position corresponding to R5 for the above shown compound is isopropyl, which is prohibited for R5 of Formula I. Moreover, Ukrorgsyntez Ltd doesn’t disclose any biological activity or potential medicinal utility for the above shown compound thus there is no reasoning for modifying the above shown compound to arrive at a compound of Formula I.
Information Disclosure Statements
The IDS filed on 11/8/24 has been considered.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH PIHONAK whose telephone number is (571)270-7710. The examiner can normally be reached Monday-Friday 9:00-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached at 571-270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SARAH . PIHONAK
Primary Examiner
Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
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