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 .
Priority
The present application is a continuation application of PCTCN2022092918 filed 2022-05-16, which claims priority to PCTCN2021093975 filed 2021-05-15.
Election/Restriction
Applicant’s election without traverse of Group I, claims 1, 2, 5, 8-12, 14, 18, 23, 27, 31, 35, 41, 43, 45, 49, and 55-57. Is acknowledged. Applicant’s species election without traverse of compound A8 of Formula (I) is acknowledged. Examiner notes that the elected species (i.e., compound A8) was not found to be anticipated or obvious over the prior art, thus the search and examination was expanded to the Markush grouping of instant claim 1. MPEP §808.02 (III)(C)(2) states “The search and examination should be continued until either (1) prior art is found that anticipates or renders obvious a species that falls within the scope of a proper Markush grouping that includes the elected species, or (2) it is determined that no prior art rejection of any species that falls within the scope of a proper Markush grouping that includes the elected species can be made.”
Status of the claims
The claims filed on 01/26/2024, election of Group I and species election accordingly with the response to the restriction requirement filed on 04/18/2026 are entered onto the record. Claims 1, 2, 5, 8-12, 14, 18, 23, 27, 31, 35, 41, 43, 45, 49, and 55-61 are pending. Claims 1, 2, 5, 8-12, 14, 18, 23, 27, 31, 35, 41, 43, 45, 49, and 55-57 are currently examined. Claims 58-61 are withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/02/2025 comply with the provisions of 37 CFR 1.97, 1.98, and MPEP § 609. Accordingly, it has been placed in the application file and the information therein has been considered on the merits.
Claim Rejections - 35 USC § 112
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.
Claim 41 is 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 41 recites the limitation "The compound of claim 1, wherein n is an integer of 0". Claim 1 does not recite “n” There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 2, 5, 8-12, 14, 18, 23, 27, 31, 35, 43, 45, 49, and 55-57 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karaguni et al. (DE 101 63 426 A1, published 2003-07-03) (see IDS filed 2023-11-09) (“Karaguni”).
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Karaguni teach a compound “EG 149… [3-(4-Benzyloxy-benzyliden)-6-fluor-2-methyl-3H_inden]-essigszӓure” (see pg. 19, “Abbildung” [Drawing] 6/7, “Blatt” [Sheet] 1, shown below).
Compound AG 149 anticipates compound A2, which is a compound of formula (I), of the instant application (see pg. 94, para. [00225], shown below).
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Regarding claims 1, 2, and 57, Compound EG 149 reads on a compound of Formula (I), wherein R1 is a C1 alkyl group; L is an C1 alkylene; R2 is C(O)OR2a where R2a is a hydrogen; R3, R5, and R6 are each hydrogen; R4 is a halo (i.e., F); RA is an arylene; X is a-O-C1 alkylene, and RB is a C6 cycloaklyl. Karaguni further teach that indene derivatives (e.g., compound EG 149) have use as “pharmaceutical purposes, in particular for the treatment or prevention of diseases associated with increased cell proliferation” (see abstract and para. [0022], machine translation).
Regarding claim 5, Compound EG 149 reads on instant claim 1 and 5, wherein RA is a phen-1,4-diyl.
Regarding claims 8-9, Compound AG 149 reads on instant claims 1 and 8-9, wherein (R7)n has an n an integer of 0; X is a-O-C1 alkylene, and RB is a C6 cycloaklyl. Claims 10-12 which depend from claim 8 are also rejected.
Regarding claim 14, Compound AG 149 reads on instant claims 1 and 14, wherein R1 is a methyl.
Regarding claim 18, Compound AG 149 reads on instant claims 1 and 18, wherein R2 is C(O)OH.
Regarding claims 23, 31, and 35, Compound AG 149 reads on instant claims 1 and 23, 31, and 35, wherein R3, R5, and R6 are each hydrogen.
Regarding claim 27, Compound AG 149 reads on instant claims 1 and 27, wherein R4 is fluoro.
Regarding claim 43, Compound AG 149 reads on instant claims 1 and 43, wherein L is methylene.
Regarding claim 45, Compound AG 149 reads on instant claims 1 and 45, wherein X is a-O-C1 alkylene.
Regarding claim 49, Compound AG 149 reads on instant claims 2 and 49, wherein X is O.
Regarding claim 55 Compound AG 149 reads on instant claims 1 and 55, wherein RB is a phenyl.
Regarding claim 56 Compound AG 149 reads on compound A2.
Thus, claims 1, 2, 5, 8-12, 14, 18, 23, 27, 31, 35, 43, 45, 49, and 55-57 are anticipated in view of Karaguni.
Conclusion
Claims 1, 2, 5, 8-12, 14, 18, 23, 27, 31, 35, 41, 43, 45, 49, and 55-57 are rejected. No claims are allowed in this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN JEROME FOWLER whose telephone number is (571)272-0195. The examiner can normally be reached Monday - Friday 9-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALAN J FOWLER/ Examiner, Art Unit 1691
/RENEE CLAYTOR/ Supervisory Patent Examiner, Art Unit 1691
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