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
Claim 2 is pending and under examination in the instant application.
Information Disclosure Statement
The examiner has considered the information disclosure statement filed most recently of record. Note that references which do not have publication dates have not been considered.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 4/22/2025 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 10/22/2025.
Status of Rejections
Double Patenting
The rejection of claim 2 is maintained with respect to US Patent 11,124,497.
Applicant’s arguments, see Remarks, filed 10/22/2025, with respect to the rejection set forth in the Non-Final Office Action mailed 4/22/2025, have been fully considered and the rejection will be held in abeyance.
35 USC § 102
The rejection of claim 2 is maintained.
Applicant’s arguments, see Remarks, filed 10/22/2025, with respect to the rejection set forth in the Non-Final Office Action mailed 4/22/2025, have been fully considered but are not found persuasive.
To reiterate the rejection, claims 1-2 are rejected under 35 U.S.C. 102(a)(2) as being anticipated over US Patent 11,952,365 which has the benefit date of the provisional application 63/037,200 filed 6/10/2020.
Provisional application 63/037,200 teaches the following compound at the end of page 23:
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which has the limitations in claim 2 wherein R1a,2 together form a heterocycle substituted with -C(O)heteroaryl which anticipates the claims. Applicants are to be aware of other species in this document which may anticipate the claims.
Applicants argue that support for several of the provisional applications is provided therein but only refers to U.S.S.N. 63/031,357 at [0010] and [0090]-[0094] specifically for support referencing ring systems formed from R1a,2. This is found unpersuasive since what is described at the aforementioned paragraphs appear to be the following:
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.
The latter does not address the examiner’s concerns regarding the lack of support (e.g. formula described in the instant claims, in particular language forming additional ring systems from R1a,2). One example shown above which does even resemble the claimed formula shown in claim 2 does not obviate the rejection. Furthermore there are no guideposts to guide one skilled in the art to readily arrive at the formula shown in claim 2 in the application. The suggested text above at [0090] by Applicant fails to address this issue as well. Thus the rejection is maintained.
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).
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