Prosecution Insights
Last updated: April 18, 2026
Application No. 18/531,630

BROMODOMAIN INHIBITORS

Non-Final OA §DP
Filed
Dec 06, 2023
Examiner
SANCHEZ, JUSTIN CHRISTOPHER
Art Unit
1622
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Celgene Quanticel Research Inc.
OA Round
1 (Non-Final)
84%
Grant Probability
Favorable
1-2
OA Rounds
3y 5m
To Grant
94%
With Interview

Examiner Intelligence

Grants 84% — above average
84%
Career Allow Rate
27 granted / 32 resolved
+24.4% vs TC avg
Moderate +10% lift
Without
With
+10.0%
Interview Lift
resolved cases with interview
Typical timeline
3y 5m
Avg Prosecution
27 currently pending
Career history
59
Total Applications
across all art units

Statute-Specific Performance

§101
0.9%
-39.1% vs TC avg
§103
29.0%
-11.0% vs TC avg
§102
19.1%
-20.9% vs TC avg
§112
31.6%
-8.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 32 resolved cases

Office Action

§DP
DETAILED ACTION Claims 36-54, submitted 06 December 2023, are pending in the application. Claims 36-46 , 48 and 50-54 are rejected. Claims 47 and 49 are allowed. 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. 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 . Claim s 36-46 and 48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-2, 5-6, 8, 11-12, 14, 17 and 21-22 of U.S. Patent No. 9,034,900 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because independent claim 1 of USPN ‘900 is drawn to a compound of Formula (I) that anticipates the instantly rejected claim s . I ndependent claim 1 of USPN ‘900 claims a compound of Formula (I), shown below, which is identical to that of the Applicants. While the aforementioned claims of USPN ‘900 and the instantly claimed invention pertain to different statutory categories, and as USPN ‘900 does not teach the intended use of the compound, the Examiner notes that the invention as defined in the specification of USPN ‘900 recites “Furthermore , the subject compounds and compositions are useful for the treatment of cancer , such as NUT midline carcinoma, Burkitt lymphoma, prostate cancer, breast cancer, bladder cancer, lung cancer and/or melanoma and the like.” (Col. 1, Lines 23-27). Consequently, it is proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co. , 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010). As such, the disclosure of USPN ‘900 teaches an identical utility, thus obviating that of the instant application which necessitates the instant rejection. Genus taught by USPN ‘900 Applicant’s genus of instant claim 36 The aforementioned claim of USPN ‘900 obviates instant claim 1 because the genus taught by USPN ‘900 is identical to that of the Applicant. Claim 1 of USPN ‘900 also anticipates instant claim 48 as instant claim 48 is also drawn to a compound of formula (I), shown below. Applicant’s genus of instant claim 48 Claim 2 of USPN ‘900 renders obvious the instant claim 37 of the instant application as claim 2 of USPN ‘900 claims an identical genus and limitations , shown below, to that of the Applicant. Genus of USPN ‘900 Claim 5 of USPN ‘900 renders obvious the instant claim 38 due to the claimed limitations being identical in the recitation of “…wherein R 6 is hydrogen and R 7 is hydrogen.” . Claim 6 of USPN ‘900 renders obvious the instant claim 39 due to the claimed limitations being identical in the recitation of “… wherein Y is a bond .” . Claim 8 of USPN ‘900 renders obvious the instant claim 40 due to the claimed limitations being identical in the recitation of “…wherein Z is -SO2R 21 .” . Claim 11 of USPN ‘900 renders obvious the instant claim 4 1 due to the claimed limitations being identical in the recitation of “…wherein R 21 is alkyl, cycloalkyl, or cycloalkylalkyl .” . Claim 12 of USPN ‘900 renders obvious the instant claim 4 2 due to the claimed limitations being identical in the recitation of “…wherein the alkyl is a C 1 -C 4 alkyl . ” . Claim 1 4 of USPN ‘900 renders obvious the instant claim 4 3 due to the claimed limitations being identical in the recitation of “…wherein W is - O -.” . Claim 1 7 of USPN ‘900 renders obvious the instant claim 4 4 due to the claimed limitations being identical in the recitation of “…wherein X is cycloalkylalkyl .” . Claim 21 of USPN ‘900 renders obvious the instant claim 45 due to the claimed limitation being identical in the recitation of “…wherein the C 1 -C 4 alkyl is a C 1 alkyl.”. Claim 22 o f USPN ‘900 renders obvious the instant claim 46 due to the claimed limitation being identical in the recitation of “… wherein Y is a bond, Z is -SO2R 21 , W is - O -, and X is aryl or cycloalkylalkyl .”. Claim 50 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,115,114 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claim 1 of USPN ‘ 114 is drawn to a compound of Formula (I Ia ) that anticipates the instantly rejected claim . Independent claim 1 of USPN ‘ 114 claims a compound of Formula ( I I a ), shown below, which is identical to that of the Applicants. While the aforementioned claims of USPN ‘ 114 and the instantly claimed invention pertain to different statutory categories, and as USPN ‘ 114 does not teach the intended use of the compound, the Examiner notes that the invention as defined in the specification of USPN ‘ 114 recites “ Furthermore, the subject compounds and compositions are useful for the treatment of cancer, such as NUT midline carcinoma, Burkitts lymphoma, prostate cancer, breast cancer, bladder cancer, lung cancer and/or melanoma and the like.” (Col. 1, Lines 23-27). Consequently, it is proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co. , 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010). As such, the disclosure of USPN ‘ 114 teaches an identical utility, thus obviating that of the instant application which necessitates the instant rejection. Genus taught by USPN ‘114 Applicant’s genus taught by instant claim 50 The aforementioned claim of USPN ‘114 obviates instant claim 50 because the genus taught by USPN ‘114 is identical to that of the Applicant. Claim 51 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,598,372 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claim 1 of USPN ‘ 372 is drawn to a compound of Formula ( XXIV ) that anticipates the instantly rejected claim. Independent claim 1 of USPN ‘ 372 claims a compound of Formula ( XXIV ), shown below, which is identical to that of the Applicants. While the aforementioned claims of USPN ‘ 372 and the instantly claimed invention pertain to different statutory categories, and as USPN ‘ 372 does not teach the intended use of the compound, the Examiner notes that the invention as defined in the specification of USPN ‘ 372 recites “Furthermore, the subject compounds and compositions are useful for the treatment of cancer, such as NUT midline carcinoma, Burkitt lymphoma, prostate cancer, breast cancer, bladder cancer, lung cancer and/or melanoma and the like.” (Col. 1, Lines 2 7 - 30 ). Consequently, it is proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co. , 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010). As such, the disclosure of USPN ‘ 372 teaches an identical utility, thus obviating that of the instant application which necessitates the instant rejection. Genus taught by USPN ‘372 Applicant’s genus taught by instant claim 51 The aforementioned claim of USPN ‘372 obviates instant claim 51 because the genus taught by USPN ‘372 is identical to that of the Applicant. Claim 51 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,023,592 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claim 1 of USPN ‘ 592 is drawn to a compound of Formula (XXIV) that anticipates the instantly rejected claim. Independent claim 1 of USPN ‘ 592 claims a compound of Formula (XXIV), shown below, which is identical to that of the Applicants. While the aforementioned claims of USPN ‘ 59 2 and the instantly claimed invention pertain to different methods of use , the genus taught by USPN ‘592 teaches identical limitations to that of the Applicant. The refore, the aforementioned claim of USPN ‘ 59 2 obviates instant claim 51 because the genus taught by USPN ‘ 59 2 is identical to that of the Applicant. Genus taught by USPN ‘592 Applicant’s genus taught by instant claim 51 Claim 52 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,562,915. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claim 1 of USPN ‘ 915 is drawn to a compound of Formula ( III ) that anticipates the instantly rejected claim. Independent claim 1 of USPN ‘915 claims a compound of Formula ( III ), shown below, which is identical to that of the Applicants. While the aforementioned claims of USPN ‘ 915 and the instantly claimed invention pertain to different statutory categories, and as USPN ‘ 915 does not teach the intended use of the compound, the Examiner notes that the invention as defined in the specification of USPN ‘ 915 recites “Furthermore, the subject compounds and compositions are useful for the treatment of cancer, such as NUT midline carcinoma, Burkitts lymphoma, prostate cancer, breast cancer, bladder cancer, lung cancer and/or melanoma and the like.” (Col. 1, Lines 30 -3 5 ). Consequently, it is proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co. , 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010). As such, the disclosure of USPN ‘ 915 teaches an identical utility, thus obviating that of the instant application which necessitates the instant rejection. Genus taught by USPN ‘915 Applicant’s genus of instant claim 52 The aforementioned claim of USPN ‘915 obviates instant claim 52 because the genus taught by USPN ‘915 is identical to that of the Applicant. Claims 53 and 54 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 10,941,160 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claim s 1 of USPN ‘ 160 is drawn to a compound of Formula (I V ) that anticipates the instantly rejected claims. Independent claim 1 of USPN ‘160 claims a compound of Formula (I V ), shown below, which is identical to that of the Applicants. While the aforementioned claims of USPN ‘160 and the instantly claimed invention pertain to different statutory categories, and as USPN ‘160 does not teach the intended use of the compound, the Examiner notes that the invention as defined in the specification of USPN ‘160 recites “Furthermore, the subject compounds and compositions are useful for the treatment of cancer, such as NUT midline carcinoma, Burkitts lymphoma, prostate cancer, breast cancer, bladder cancer, lung cancer and/or melanoma and the like.” (Col. 1, Lines 31 - 35 ). Consequently, it is proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co. , 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010). As such, the disclosure of USPN ‘ 160 teaches an identical utility, thus obviating that of the instant application which necessitates the instant rejection. Genus of USPN ‘160 Applicant’s genus of instant claim 53 Claim 10 of USPN ‘ 160 renders obvious the instant claim 54 due to the genus of the aforementioned claims being identical , shown below. Genus taught by USPN ‘160 Applicant’s genus of instant claim 54 The aforementioned claim of USPN ‘ 160 obviates instant claim 5 4 because the genus taught by USPN ‘ 160 is identical to that of the Applicant. Allowable Subject Matter Claims 47 and 49 are drawn to allowable subject matter. The following is an examiner’s statement of reasons for allowance: the aforementioned claims are deemed novel and unobvious over the prior art . The closest prior art is Imogai et al. (US 2007/0213323 A1), which teaches a compound , shown below, which is similar to that of the Applicant’s. However, this reference teaches a compound which lacks the 3-membered ring attached to the alkoxy, which is not in the proper position on the aryl, and additionally lacks the thiol moiety, shown below, which would lead to an identical compound to that of the Applicant’s . Imogia’s Compound ( Example 39 ) ( paragraph 707 ) Applicant’s compound of instant claims 47 and 49 (Compound exemplified in Examiner’s search) Therefore, the prior art neither anticipates nor reasonably makes obvious the claimed invention. Thus, the aforementioned claims are deemed novel an non-obvious over the prior art. Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.” Conclusion Claims 47 and 49 are drawn to allowable subject matter. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT JUSTIN CHRISTOPHER SANCHEZ whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (703)756-5336 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday -Friday (0730-1700) . 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, FILLIN "SPE Name?" \* MERGEFORMAT James H Alstrum-Acevedo can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-5548 . 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. FILLIN "Examiner Stamp" \* MERGEFORMAT JUSTIN CHRISTOPHER SANCHEZ Examiner Art Unit 1622 /J.C.S./ Examiner, Art Unit 1622 /JAMES H ALSTRUM-ACEVEDO/ Supervisory Patent Examiner, Art Unit 1622
Read full office action

Prosecution Timeline

Dec 06, 2023
Application Filed
Mar 20, 2026
Non-Final Rejection — §DP (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
84%
Grant Probability
94%
With Interview (+10.0%)
3y 5m
Median Time to Grant
Low
PTA Risk
Based on 32 resolved cases by this examiner. Grant probability derived from career allow rate.

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