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
Priority and Status of the Claims
1. This application is a CON of PCT/EP2022/063350 05/17/2022, which claims benefit of the foreign applications: EPO EP21174041 05/17/2021 and EPO EP21211529 11/30/2021.
2. Applicant’s remarks filed on 5/19/2026 are acknowledged. Claims 1-2, 4-5, 7, 16 and 23-36 are pending in the application.
Responses to Election/Restriction
3. Applicant’s election without arguments of Group II claims 23-36 in the reply filed on May 19, 2026 is acknowledged. Election of a compound, i.e.,
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, as a single species is also acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-2, 4-5, 7, 16 and 23-36 are pending in the application.
The scope of the invention of the elected subject matter is as follows.
Claims 23-36, are drawn to a compound of formula (I) thereof, and are prosecuted in the case.
Claims 1-2, 4-5, 7 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
The requirement is still deemed proper and therefore is made FINAL.
4. 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.
Claim Rejections - 35 USC § 102
5. 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.
Claim 23 is rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Dolbois et al., Journal of Medicinal Chemistry, 2021, 64(17): 12738-12760.
Applicant claim a compound of formula (I), i.e.,
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, wherein Y is C=O, X is O or NH, U and V are -CH2- or
–(CH2)2-, Z1 and Z2 is N, CH or Cr2, R3 is substituted alkylamine, R1 is aryl, heteroaryl,
cycloalkyl or heterocycle, and R2 is F, Me, Cl, OH, NH2, Br, CF3, CHF2, or CH2F, see claim 23.
Dolbois et al. disclose a number of compounds, i.e., compound No. 8-22 on pages 12740-12742. They clearly anticipate the instant compounds of formula (I), wherein Y is C=O, X is O or NH, U and V are -CH2- or –(CH2)2-, Z1 and Z2 is N, CH or Cr2, R3 is substituted alkylamine, R1 is aryl, heteroaryl, cycloalkyl or heterocycle, and R2 is F, Me, Cl, OH, NH2, Br, CF3, CHF2, or CH2F.
Claim Rejections - 35 USC § 103
6. The following is a quotation of 35 U.S.C. 103(a) 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(f) or (g) prior art under 35 U.S.C. 103(a).
Claims 23-36 are rejected under 35 U.S.C. 103(a) as being obvious over Dolbois
et al., Journal of Medicinal Chemistry, 2021, 64(17): 12738-12760.
Applicant claim a compound/composition of formula (I), i.e.,
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, wherein Y is C=O, X is O or NH, U and V are -CH2- or
–(CH2)2-, Z1 and Z2 is N, CH or Cr2, R3 is substituted alkylamine, R1 is aryl, heteroaryl,
cycloalkyl or heterocycle, and R2 is F, Me, Cl, OH, NH2, Br, CF3, CHF2, or CH2F, see claim 23. Dependent claims 24-36 further limit the scope of compounds, i.e., specific compounds of formula (II), (III), (IV), variable R3 and methods of use for treating cancer.
Determination of the scope and content of the prior art (MPEP §2141.01)
Dolbois et al., disclose a compound/composition of the formula, i.e.,
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, wherein Y is C=O, Z is N or CH, X is NH, R is
Alkyl, see pages 12740-12742. Dolbois et al. compounds are used for treating cancer.
Determination of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claims and Dolbois et al. is that the instant claims are embraced within the scope of Dolbois et al.
Finding of prima facie obviousness-rational and motivation (MPEP §2142-2143)
One having ordinary skill in the art would find the claims 23-36 prima facie obvious because one would be motivated to employ compounds and methods of use of Dolbois et al. to obtain instant invention.
The motivation to make the claimed compounds and methods of use derived from the known compounds and methods of use of Dolbois et al. would possess similar activity to that which is claimed in the reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to REI TSANG SHIAO whose telephone number is (571)272-0707. The examiner can normally be reached on 8:30 am-5:00 pm.
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, Renee Claytor can be reached on 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
June 29, 2026
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