Prosecution Insights
Last updated: April 18, 2026
Application No. 18/468,639

METHOD FOR DETECTING NEUROLOGICAL DISEASES USING SUPRAMOLECULE POLYMER THERAPEUTICS

Non-Final OA §102§112§DP
Filed
Sep 15, 2023
Examiner
ESSEX, LAURA ANN
Art Unit
1675
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
The Regents of the University of California
OA Round
1 (Non-Final)
60%
Grant Probability
Moderate
1-2
OA Rounds
3y 2m
To Grant
93%
With Interview

Examiner Intelligence

Grants 60% of resolved cases
60%
Career Allow Rate
62 granted / 104 resolved
At TC average
Strong +34% interview lift
Without
With
+33.8%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
32 currently pending
Career history
136
Total Applications
across all art units

Statute-Specific Performance

§101
2.3%
-37.7% vs TC avg
§103
31.7%
-8.3% vs TC avg
§102
14.1%
-25.9% vs TC avg
§112
33.3%
-6.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 104 resolved cases

Office Action

§102 §112 §DP
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. 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 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. DETAILED ACTION Claims 1-20 are pending in the instant application. Priority T his application claims priority to the provisional application 63407106 filed on 9/15/2022. Information Disclosure Statement The information disclosure statement (IDS) dated 4/15/2024 complies with the provisions of 27 CFR 1.97, 1.98, and MPEP § 609. Accordingly, it has been placed in the application file and the information therein has been considered as to the merits. Objections to the Claims Claim 3, part (a), please replace “heterocycle” with “heterocyclic”. Claim 3, part (f), is lacking articles and verbs. Please replace “within adjacent molecule bound to a stacked protein” with “within the adjacent molecule that is bound to a stacked protein.” Claim 3, part (g) requires a more descriptive transitive word. Please replace “stacked proteins which interactions” with “stacked proteins wherein said interactions”. Claim 7 , line 5, lacks a comma. Please replace “or unsubstituted naphthyridinone or ” with “or unsubstituted naphthyridinone or, ”. Claim 7 , line 7, lacks a comma. Please replace “or unsubstituted aryl or ” with “or unsubstituted aryl or, ”. Because written chemical names include commas, lists of chemical moieties should be delineated by semi-colons. For enhanced clarity, please add semi-colons between species within claims 12 , 14 , and 16 . Correction is required. See MPEP § 608.01(m). Claim Rejections – 35 USC § 112(b) 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 appl icant regards as his invention. Claim s 1-20 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 1 Claim 1 refers to a step of “determining binding of the labeled molecule”, wherein it is unclear how this should be interpreted. One artisan may conclude this refers to how specific the molecule is at binding its target (e.g. binding specificity for tau over other proteins). Whereas another artisan may conclude this refers to how strong the molecule binds to its target (e.g. binding strength to tau via dissociation constant determination). Whereas yet another artisan may conclude this step refers to in vivo or in vitro binding localization studies (e.g. binding to tau aggregates over tau protein in PET ). As a result of these multiple interpretations, this claim is rendered indefinite. Furthermore, because the third step “ thereby determining a neurological disease associated with the brain tissue ” lacks any criteria for differentiating a healthy versus non-healthy brain tissue, it is unclear what actions an artisan would need to take in order to perform this step. Dependent claims 2 -20 fail to cure these deficiencies, thus are also rendered indefinite. Claim 2 Claim 2 is drawn to “the determining” of claim 1, wherein there are two determining steps. It is unclear if this is referring to (i) the second step of “ determining binding of the labeled molecule ”; (ii) the third step of “ determining a neurological disease ”; or (iii) both of these. If applicant is invoking (ii) or (iii), then it is unclear what indicators revealed by PET/MS/MRI would indicate the subject has a neurological disease versus those that don’t. As a result of these multiple interpretations, this claim is rendered indefinite. Claim 3 Claim 3 is drawn to “a binding portion of the labeled molecule” possessing distinct crystallographic parameters and chemical properties that are distinct from the whole molecule. Because organic molecules crystallize as a whole, portions of a molecule are incapable of crystalizing absent the other portions of the molecule. Thus it is impossible to meet the instantly claimed limitations, excluding the condition where the entire molecule is considered the “binding portion”. Furthermore, it is unclear what “binding portion” is referring to. One of skill in the art may conclude this is referring to the fragment that binds a protein aggregate (e.g. tau) whereas another would presume this is the fragment that is merely capable of participating in hydrogen bonding or self-association in a crystal structure. One of skill in the art, when handed a given molecule would not be able to definitively identify the “binding portion” thereof, absent any context. As a result of this lack of clarity, this claim is rendered indefinite. Claim 20 Claim 20 refers to a table. 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 w here 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). See MPEP § 2173.05(s). In the instant case, the chemical structures in Fig 6 could be easily incorporated into the claim without confusion. Claim Rejections – 35 USC § 112(a) The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Claim s 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 Claim 1 is drawn to the genus of ‘molecules that bind multiple sites of a stacked protein associated with a neurological disease,’ wherein no structural criteria for these molecules or their targets has been provided. Given this description, one of skill in the art would not be able to envisage the members of this genus because it is not a well-known genus in the prior art. Applicant can meet the written description requirement by (i) describing a representative number of species or (ii) describing the core structure that is responsible for these properties. Regarding (i), applicant has provided a large number of chemical structures, in addition to a large number of diseases (comprising a variety of protein targets) (pg 76, para 00182). Applicant has not purported that any single species is capable of treating all of the diseases listed below. The neurodegenerative disease is any neurodegenerative disease that is associated with stacked proteins including, without limitation, transmissible spongiform encephalopathies such as Creutzfeldt-Jakob disease (CJD), multiple system atrophy (MSA), Alzheimer's disease, Parkinson's disease, Amyotrophic lateral sclerosis (ALS), Amyotrophic lateral sclerosis/Parkinsonism-dementia complex, anti-IgLON5-related tauopathy, Caribbean Parkinsonism, Chronic traumatic encephalopathy, Diffuse neurofibrillary tangles with calcification, Down syndrome, Familial British dementia, Familial Danish dementia, NiemannPick disease, type C, Non-Guamanian motor neuron disease with neurofibrillary tangles, Postencephalitic Parkinsonism, Primary age-related tauopathy, Progressive ataxia and palatal tremor, Tangle-only dementia, Familial frontotemporal dementia and Parkinsonism, Pick's disease, Argyrophilic grain disease, Corticobasal degeneration, Guadeloupean Parkinsonism, Globular glial tauopathy, Huntington's disease, Progressive supranuclear palsy, SLC9a-related Parkinsonism, Tau astrogliopathy, etc. In some embodiments, the neurodegenerative disease is multiple systems atrophy (MSA). In some embodiments, the neurodegenerative disease is Parkinson's disease. In some embodiments, the neurodegenerative disease is Alzheimer's disease. “The templated misfolding proteins of the present disclosure may be any templated misfolding proteins that is associated with a neurological disease. Templated misfolding proteins that are associated with a neurological disease include, without limitation, prions associated with transmissible spongiform encephalopathies such as Creutzfeldt-Jakob disease (CJD), a-synuclein associated with multiple system atrophy (MSA), amyloid b associated with Alzheimer's and Parkinson's disease, tau associated with Alzheimer's and Parkinson's disease, etc” (pg 81, para 00193-194). It is known that binding is dependent on both the chemical identity of the molecule and the target. This is evidenced by Honer ( doi: 10.2967/jnumed.117.196741 ), who describes several molecules that bind tau, but not alpha-synuclein, despite all of them being organic molecules (pg 677, col 2, para 4). Furthermore, while tau is implicated in Alzheimer’s disease, Blokhuis ( doi: 10.1007/s00401-013-1125-6 ) teaches that other diseases such as ALS involve aggregates of different protein identities (e.g. FUS, TDP-43, OPTN, UBQLN2) (abstract). Thus from the list of diseases provided, one cannot presume a single protein as the target. Given the heterogeneity of the protein targets and the structures represented, one of skill in the art would not be able to envisage other members of this genus. Regarding (ii), applicant has not provided the core structural feature(s) that a molecule must contain in order to possess the property of ‘binding multiple sites of a stacked protein associated with a neurological disease.’ In sum, because different diseases exhibit different protein targets and applicant has not described any universally-targeting species, applicant has failed to meet the written description requirement of ‘molecules that bind multiple sites of a stacked protein associated with a neurological disease.’ Dependent claims 2 -20 fail to cure these deficiencies, thus also fail the written description requirement. Claim 3 Claim 3 is drawn to a genus of compounds with specific crystallographic parameters (e.g. stacking with planar cores of 3.3-3.5 Å and angles between perpendicular planes), wherein no chemical structural information is provided beyond comprising “one or two rings”. Given this description, one of skill in the art would not be able to envisage the members of this genus. Applicant can meet the written description requirement by (i) describing a representative number of species or (ii) describing the core structure that is responsible for these properties. Regarding (i), applicant has failed to provide crystallographic data regarding every compound described within the specification, thus it is unclear which of the described species even possess the claimed properties of (c)-(f). Furthermore, the precise stacking of said molecules within a crystallographic structure is variable depending on the conditions of the crystallization procedure (solvent, temperature, impurities, and crystal polymorphs ), thus one of skill in the art would not be able to a priori predict the precise crystallographic stacking angles or distances simply by looking at a drawn chemical structure (See Dunitz doi: 10.1039/b211531j ) . Dunitz answers the question “Are crystal structures predictable? The one-word answer to the title question is still ‘ No ’ , although at certain levels of discussion a ‘ Maybe ’ , or even a conditional ‘ Yes ’ , may be entertained as possible responses ” (Abstract). Dunitz teaches “ Experts in the field have tried their skills in two blind tests and discussed their methods, together with their successes and failures, at two meetings organized by the Cambridge Crystallographic Data Centre in 1999 and 2001. Although some successes were reported, no method gave consistently reliable predictions ” ( 545, col 1, para 1). For example, Price ( doi: 10.1039/c3cs60279f ) teaches while computational methods exist to estimate crystal structure parameters, they fail to anticipate the crystal that is adopted in reality. Price teaches “[Computation prediction methods] are based on the assumption that the crystal structure will be the thermodynamically most stable of all possible structures. However, polymorphism , the observation of different crystal structures containing only the same molecules, immediately shows that some crystal structures are not the thermodynamically most stable. ” “…t he crystal energy landscape rarely contains only one crystal structure, i.e. it is relatively rare for a molecule to have one way of packing with itself that is significantly more favourable, than any other . The fields of crystal engineering and self-assembly are dominated by multicomponent systems because of the scarcity of molecules that can close pack with strong intermolecular interactions defining a unique packing in all three dimensions … Hence, the main use of CSP studies is to find the range of different packings that are thermodynamically plausible crystal structures. ” Corpinot ( doi: 10.1021/acs.cgd.8b00972 ) echoes these statements, “the structures of bespoke molecular crystals are still impossible to predict solely on the basis of previous crystallographic knowledge and intuition ” (pg 1427, col 1, para 3). Thus it is impossible for applicant to meet the written description requirements via providing a representative number of species, because these properties cannot be predicted a priori. Regarding (ii), applicant has failed to provide the core structure necessary to preserve these specific crystallographic properties. Instant Fig 4 (shown below), suggests that only fused 5-membered aromatic cycles are capable of producing such an effect, however the claim is drawn to any chemical structure comprising “one or two rings” even those that are not fused. Applicant has claimed many compounds that do not feature the structural element shown in Fig. 4, thus applicant has failed to clearly provide what structural elements are responsible for this particular stacking. In sum, because applicant cannot meet the written description requirement via describing a representative number of species, applicant is limited to the group of chemical compounds where crystallographic studies have been completed which verify the existence of these properties. In sum, Applicant has failed to meet the written description requirement of compounds possessing the instantly claimed properties. Claim Rejections – 35 USC § 102/103 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. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. Claim s 1-2 and 4-6 are rejected under 35 U.S.C. 102( a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Honer ( doi: 10.2967/jnumed.117.196741 ). Claim 1 Regarding claim 1 , Honer teaches Tau aggregates and amyloid-β (Aβ) plaques are key histopathologic features in Alzheimer disease (AD) and are considered targets for therapeutic intervention as well as biomarkers for diagnostic in vivo imaging agents (abstract). Honer teaches the compounds 3H-RO6958948, 3H-RO6931643, and 3H-RO6924963 bind with high affinity and specificity to tau aggregates (abstract). Honer teaches after intravenous administration of 18F-RO6958948, 11CRO6931643, and 11C-RO6924963 to baboons, PET scans indicated good brain entry, rapid washout, and a favorable metabolism pattern (abstract). Honer teaches tau becomes hyperphosphorylated and aggregates to neurofibrillary tangles (NFTs) and neuropil threads in the brains of Alzheimer disease (AD) patients (pg 675, col 2, para 1). Honer teaches determining the binding of the labeled molecule’s specificity via PET and via cross-reference to in vitro radiography studies in AD diseased brain slices and in healthy controls (pg 679, col 2, para 2; Fig 7, Fig 3). In sum, this satis fies the limitations of contacting a brain tissue with a labeled molecule that binds a protein associated with a neurological disease (e.g. tau) and determining the binding of the labeled molecule, thereby determining a neurological disease. While Honer does not teach that tau proteins “stack” in Alzheimer’s disease, it was known in the prior art that the tau molecules associate via π-stacking to form aggregates, as an evidentiary reference, see Ferrari ( doi: 10.1038/s41467-019-13745-7 ). Thus the reference to “stacked” proteins is inherent to the tau aggregates associated with Alzheimer’s disease. Because the structures of Honer (exemplary structure shown below, Fig 1) features multiple lone pairs on the nitrogen atoms available for hydrogen-bonding, this satisfies the limitation of “binding multiple sites of the stacked proteins” as both the molecule and the protein comprise multiple hydrogen bond acceptors/donors (e.g. NH and carbonyl moieties) in addition to variations in charge available for forming bonds of an electrostatic nature. Claim 2 Regarding claim 2, Honer teaches their method uses positron emission tomography (PET) ( Fig 7; abstract). Claim 4 Regarding claim 4, Honer teaches the disease is Alzheimer’s disease ( pg 679, col 2, para 2 ). Claim 5 Regarding claim 5, Honer teaches the molecules can be labeled with 18F (Fig 7). Claim 6 Regarding claim 6, Honer teaches the molecule binds tau (abstract). Double Patenting The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer . 18/4686 33 Claim 1-4, 6-17, 19-20 Claims 1- 4, 6- 17 , and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/468 633 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other as described in the claim-by-claim analysis below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. To avoid improperly treating what is disclosed in a reference patent or copending application as if it were prior art in the context of a nonstatutory double patenting analysis, the examiner must first properly construe the scope of the reference claims. The portion of the specification of the reference that describes subject matter that falls within the scope of a reference claim may be relied upon to properly construe the scope of that claim. In particular, when ascertaining the scope of the reference’s claim(s) to a compound, the examiner should consider the reference’s specification, including all of the compound’s uses that are disclosed. See Sun Pharm. Indus., 611 F.3d at 1386-88, 95 USPQ2d at 1801-02. If claims to the compound’s use and the compound were subject to a restriction requirement, and the compound was elected, a nonstatutory double patenting rejection may not be appropriate in a divisional application claiming the restricted compound’s use. See MPEP § 804.01. However, subject matter disclosed in the reference patent or application that does not fall within the scope of a reference claim cannot be used to support a nonstatutory double patenting rejection as this would effectively be treating the reference patent or application as prior art. See MPEP § 804(B)(1). The specification of this reference describes : “The present disclosure also provides methods for detecting a neurological disease the method comprising contacting the brain tissue with a labeled molecule which binds to multiple sites of stacked proteins associated with neurological disease, determining the binding of the labeled molecule; and thereby determining a neurological disease associated with the brain tissue” (pg 68 , para 00159 ). “Detecting a neurological disease of the present disclosure involves contacting brain tissue with a labeled molecule. The labeled molecule may be any molecule that is both able to bind to multiple sites of stacked proteins of a neurodegenerative disease and has a detectable label. The detectable label may be any detectable label that is detectable using Positron emission tomography (PET). Detectable labels include, without limitation, [2H], [3H], [ 11 C], [18F], [13N], etc” (pg 69, para 00163). “In some embodiments, the labeled molecule is a molecule according to formula (I). In some embodiments, the labeled molecule is a molecule according to formula (II). In some embodiments, the labeled molecule is a molecule according to formula (Ill). In some embodiments, the labeled molecule is a molecule according to formula (IV). In some embodiments, the labeled molecule is a molecule according to formula (V). In some embodiments, the labeled molecule is a molecule according to formula (VI). In some embodiments, the labeled molecule is a molecule according to formula (VII). In some embodiments, the labeled molecule is a molecule according to formula (VIII). In some embodiments, the labeled molecule is a molecule according to formula (IX). In some embodiments, the labeled molecule is a molecule according to formula (X). In some embodiments, the labeled molecule is a molecule according to formula (XI). In some embodiments, the labeled molecule is a molecule according to formula (XII). In some embodiments, the labeled molecule is a molecule according to formula (XIll)(a)” (pg 70, para 00164). At the time of filing, the method of detecting neurological disease comprising contacting instantly claim ed compounds were a known use, thus rendering obvious the method of detecting a neurological disease in the instant application . Th e claim-by-claim analysis comparing the instant application with that of the reference is as follows: Regarding instant claim 1, the reference teaches using the compounds to detect a neurological disease comprising contacting the molecules with brain tissue (pg 69, para 00163). Regarding instant claim 2, the reference teaches using positron emission tomography (pg 69, para 00163). Regarding instant claim 3, the reference teaches using the same labeled molecules as instantly claimed, thus these molecule inherently possess the features of (a)-(e). “ A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. ” See MPEP §2112.01(II) . Regarding instant claim 4, the reference teaches neurological disease is Alzheimer’s Disease (pg 15, para 0040). Regarding instant claim 6, the reference teaches the instantly claimed molecules disrupt the stacking of the protein, tau (pg 69, para 00162). Regarding instant claim 7, the reference claims the same chemical oxazolyl formula (I) (claim 1). Regarding instant claim 8, the reference claims the identical naphthyridinone/dihydronaphthyridinone structure (claim 2). Regarding instant claim 9, the reference claims the identical naphthyridinone and dihydronaphthyridinone structures for variable T (claim 3). Regarding instant claim 10, the reference claims the identical naphthyridinone (claim 4). Regarding instant claim 11, the reference claims the identical variables for X (claim 5). Regarding instant claim 12, the reference claims the identical variables for X (claim 6). Regarding instant claim 13, the reference claims the identical variables for Z (claim 7). Regarding instant claim 14 the reference claims the identical variables for Z (claim 8). Regarding instant claim 15, the reference claims the identical formulas (claim 9). Regarding instant claim 16, the reference claims the identical species of formula (I) (claim 10). Regarding instant claim 17, the reference claims the identical exemplary species of formula (I) shown below (claim 11). Regarding instant claim 19, the reference claims the identical formula (XVI) (claim 14). Regarding instant claim 20, the reference claims the identical Fig 6 (claim 20). Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/468633 in view of Honer ( doi: 10.2967/jnumed.117.196741 ). This is a provisional nonstatutory double patenting rejection. Claim 5 Regarding instant claim 5, the reference does not claim isotopically labelled compounds. Honer teaches isotopically labeling compounds (e.g. 18F, 3H) for the purpose of imaging tau aggregates using positron emission tomography (PET) ( Abstract, Fig 1). It would have been obvious to combine the teachings of the reference and Honer , because both methods are drawn to detecting tau using a radiolabeled molecule. One of skill in the art would have had a reasonable expectation of success because Honer teaches several radiolabeled tracers that bind tau aggregates, wherein the label is an isotopic label that is detectable by PET, and the reference teaches tau binding compounds that are amenable to having isotopic labels incorporated into their structures. 18/4686 57 Claim 1-4, 6-16, 19-20 Claims 1-4, 6-16, and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/4686 57 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other as described in the claim-by-claim analysis below. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. To avoid improperly treating what is disclosed in a reference patent or copending application as if it were prior art in the context of a nonstatutory double patenting analysis, the examiner must first properly construe the scope of the reference claims. The portion of the specification of the reference that describes subject matter that falls within the scope of a reference claim may be relied upon to properly construe the scope of that claim. In particular, when ascertaining the scope of the reference’s claim(s) to a compound, the examiner should consider the reference’s specification, including all of the compound’s uses that are disclosed. See Sun Pharm. Indus., 611 F.3d at 1386-88, 95 USPQ2d at 1801-02. If claims to the compound’s use and the compound were subject to a restriction requirement, and the compound was elected, a nonstatutory double patenting rejection may not be appropriate in a divisional application claiming the restricted compound’s use. See MPEP § 804.01. However, subject matter disclosed in the reference patent or application that does not fall within the scope of a reference claim cannot be used to support a nonstatutory double patenting rejection as this would effectively be treating the reference patent or application as prior art. See MPEP § 804(B)(1). The specification of this reference describes : “The present disclosure also provides methods for detecting a neurological disease the method comprising contacting the brain tissue with a labeled molecule which binds to multiple sites of stacked proteins associated with neurological disease, determining the binding of the labeled molecule; and thereby determining a neurological disease associated with the brain tissue” (pg 68 , para 00159 ). “Detecting a neurological disease of the present disclosure involves contacting brain tissue with a labeled molecule. The labeled molecule may be any molecule that is both able to bind to multiple sites of stacked proteins of a neurodegenerative disease and has a detectable label. The detectable label may be any detectable label that is detectable using Positron emission tomography (PET). Detectable labels include, without limitation, [2H], [3H], [ 11 C], [18F], [13N], etc” (pg 69, para 00163). “In some embodiments, the labeled molecule is a molecule according to formula (I). In some embodiments, the labeled molecule is a molecule according to formula (II). In some embodiments, the labeled molecule is a molecule according to formula (Ill). In some embodiments, the labeled molecule is a molecule according to formula (IV). In some embodiments, the labeled molecule is a molecule according to formula (V). In some embodiments, the labeled molecule is a molecule according to formula (VI). In some embodiments, the labeled molecule is a molecule according to formula (VII). In some embodiments, the labeled molecule is a molecule according to formula (VIII). In some embodiments, the labeled molecule is a molecule according to formula (IX). In some embodiments, the labeled molecule is a molecule according to formula (X). In some embodiments, the labeled molecule is a molecule according to formula (XI). In some embodiments, the labeled molecule is a molecule according to formula (XII). In some embodiments, the labeled molecule is a molecule according to formula (XIll)(a)” (pg 70, para 00164). At the time of filing, the method of detecting neurological disease comprising contacting instantly claim ed compounds were a known use, thus rendering obvious the method of detecting a neurological disease in the instant application . Th e claim-by-claim analysis comparing the instant application with that of the reference is as follows: Regarding instant claim 1, the reference teaches using the compounds to detect a neurological disease comprising contacting the molecules with brain tissue (pg 69, para 00163). Regarding instant claim 2, the reference teaches using positron emission tomography (pg 69, para 00163). Regarding instant claim 3, the reference teaches using the same labeled molecules as instantly claimed, thus these molecule inherently possess the features of (a)-(e). “ A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. ” See MPEP §2112.01(II) . Regarding instant claim 4, the reference teaches neurological disease is Alzheimer’s Disease (pg 15, para 0040). Regarding instant claim 6, the reference teaches the instantly claimed molecules disrupt the stacking of the protein, tau (pg 69, para 00162). Regarding instant claim 7, the reference claims the same chemical oxazolyl formula (I) (claim 7). Regarding instant claim 8, the reference claims the identical naphthyridinone/dihydronaphthyridinone structures (claim 8). Regarding instant claim 9, the reference claims the identical naphthyridinone and dihydronaphthyridinone structures for variable T (claim 9). Regarding instant claim 10, the reference claims the identical naphthyridinone (claim 10). Regarding instant claim 11, the reference claims the identical variables for X (claim 11). Regarding instant claim 12, the reference claims the identical variables for X (claim 12 ). Regarding instant claim 13, the reference claims the identical variables for Z (claim 13 ). Regarding instant claim 14 the reference claims the identical variables for Z (claim 14 ). Regarding instant claim 15, the reference claims the identical formulas (claim 15 ). Regarding instant claim 16, the reference claims the identical species of formula (I) (claim 1 6 ). Regarding instant claim 19, the reference claims the identical formula (XVI) (claim 1 9 ). Regarding instant claim 20, the reference claims the identical Fig 6 (claim 20). Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/468633 in view of Honer ( doi: 10.2967/jnumed.117.196741 ). This is a provisional nonstatutory double patenting rejection. Claim 5 Regarding instant claim 5, the reference does not claim isotopically labelled compounds. Honer teaches isotopically labeling compounds (e.g. 18F, 3H) for the purpose of imaging tau aggregates using positron emission tomography (PET) (Abstract, Fig 1). It would have been obvious to combine the teachings of the reference and Honer , because both methods are drawn to detecting tau using a radiolabeled molecule. One of skill in the art would have had a reasonable expectation of success because Honer teaches several radiolabeled tracers that bind tau aggregates, wherein the label is an isotopic label that is detectable by PET, and the reference teaches tau binding compounds that are amenable to having isotopic labels incorporated into their structures. Allowable Subject Matter Claim 7 The compounds of claim 7 were found allowable over the prior art. The closest prior art to the n aphthyridinone /dihydron aphthyridinone substituted oxazolyl compounds of formula (I) are those of Duggan ( US20100130540 ) who teaches naphthyridinone/dihydronaphthyridinone structures of formula (I) as a means of treating neurodegenerative diseases (pg 1, para 0003; pg 1, para 0007). Importantly, Duggan does not teach or suggest attaching the naphthyridinone/dihydronaphthyridinone unit to the 4-position of the oxazole as instantly claimed. Duggan teaches other 5-membered heterocycles such as imidazole (shown below) and triazole being separated by methylene linker (pg 1, para 0012). Absent a specific teaching to combine the naphthyridinone/dihydronaphthyridinone unit with a oxazole unit, whilst removing the methylene spacer, one of skill in the art would not have been motivated to generate the instantly claimed structures of formula (I). Dependent claims 2-13 and 19 which are drawn to more specific exemplary structures of Formula (I) and pharmaceutical compositions thereof are also rendered allowable. Claim 19 The compounds of claim 19 were found allowable over the prior art. The closest prior art to the pyrrolopyrimidinone , pyrrolopyridinone , furopyrimidinone and furopyridinone structures of formula (XVI) are those of Tamagnan ( US20100143253 ). Tamagnan teaches structure of the formula below as a means of treating neurodegenerative diseases (pg 15, para 0062-0063). Importantly, the structures of Tamagnan lack the 5-membered heterocycle affixed to the 3-position of pyrimidinone unit, which is analogous to the 5-position of the pyridinone unit (as shown below). Furthermore, of the fused heterocycles shown in Tamagnan’s formula above, all of them lack the carbonyl functionality of a pyrimidinone/pyridinone. Absent a specific teaching (i) to incorporate a carbonyl to generate a pyridinone or pyrimidinone species; and (i) to incorporate a 5-membered heterocycle at the 3 or 5 position, one of skill in the art would not have been motivated to generate the instantly claimed compounds. Dependent claims 15-18 which are drawn to more specific exemplary structures of Formula ( XV I) are also rendered allowable. Claim 20 Claim 20 is drawn to 812 distinctive species largely composed of the following structures (G1)-(G6), shown below. Structures of (G4) represented species of formula (I), discussed previously. Note: the short-hand structures drawn below depict greater breadth than what is claimed. Examiner does not assert that the genera of (G1)-(G6) shown below are also allowable. Examiner is merely using this as a means of organizing the discrete instantly claimed species. In other words, only the discretely claimed species described within Fig 6 were found allowable. These distinct chemical species of (G1)-(G6) were not found in the prior art. The closest prior art to (G1) is that of Inoue ( US20090131413 ). Inoue teaches compounds of formula (I), shown below (pg 2, para 0014). At best Inoue teaches the following structure, which lacks the 4-fluoro group on the benzyl unit and attaches an N-linked (2,4-di-4-morpholinylphenyl)group that was not featured in any of the compounds in Fig 6. Absent a specific teaching to remove the dimorpholine unit and fluorinate the benzyl unit, one of skill in the art would not have been motivated to modify the structure of Inoue. The closest prior art to (G2)-(G3) is that of Molette ( US20190071450 ), who teaches a structures of formula (I), shown below (pg 3, para 0025). However, Molette fails to teach any exemplary species comprising the same heterocycle unit as (G2) and (G3) , shown below (pg 5, para 0053). Given the teachings of Molette, one of skill in the art would not have been motivated to select a heterocycle that was not specifically taught in the reference. See also the structures of Honer (doi : 10.2967/jnumed.117.196741 ), who teaches the following structures shown below (Fig 1), none of which were claimed in Fig 6. The closest prior art to (G5)-(G6) is that of Chatzopoulou (doi : 10.1039/c3cc45410j ) who teaches a method of generating 3-indole containing oxazoles (Table 2, shown below). Because none of the compounds within Fig 6 featured an indole at 6-position of the oxazole, one of skill in the art would not have been motivated to remove this element, as it is critical for the synthesis to function (Table 2, shown below). Absent a specific teaching to generate each of the specific species described in Fig 6, one of skill in the art would not have been motivated to synthesize said species. MPEP §2144.09 sets forth various considerations when considering compounds of close chemical structure, e.g., that successive addition of the same chemical group, such as additional CH2 groups, are generally expected to be so close that they possess the same or similar properties. However, while structural similarity is one consideration for obviousness, the evidence as a whole must be considered. In this case, there are large disparities between the chemical structures claimed and those in the prior art (e.g. completely different heterocycles and functional groups). As discussed above, absent a motivation to generate the instantly claimed compounds, one of skill in the art would not have found it obvious to generate them. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA ANN ESSEX whose telephone number is 571-272-1103. The examiner can normally be reached Mon - Fri 8:30-5:00. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Stucker can be reached on 571-272-0911. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /L.A.E./ Examiner, Art Unit 16 75 /JEFFREY STUCKER/ Supervisory Patent Examiner, Art Unit 1675
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Prosecution Timeline

Sep 15, 2023
Application Filed
Mar 28, 2026
Non-Final Rejection — §102, §112, §DP (current)

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1-2
Expected OA Rounds
60%
Grant Probability
93%
With Interview (+33.8%)
3y 2m
Median Time to Grant
Low
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