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 371 PCT/US2022/071130 03/14/2022, which claims benefit of the provisional application: 63161112 03/15/2021.
2. Claims 1-20 are pending in the application.
Claim Rejections - 35 USC § 112
3. 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.
Claims 1-15 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 pre-AIA the applicant regards as the invention.
Claim 1, page 4, line 30, recites the limitation “W, together with carbon atoms C14 and C15, forms a C3-C7-carbocycle or a 3- to 7-membered heterocycle” is ambiguous and indefinite. It is unclear what the moiety C14 and C15 are. Clarification is required.
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 1 is rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Kim et al. CAS: 172: 62571, 2019.
Applicants claim a compound or pharmaceutically acceptable salt thereof, wherein the compound has a structure corresponding to Formula (V-C1),
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, wherein the A ring is an unsaturated, partially saturated, or saturated carbocyclic or heterocyclic ring containing 5 or 6 ring atoms (i.e., phenyl); m is an integer selected from the group consisting of 0, 1, 2, and 3; n is an integer selected from the group consisting of 0, 1, 2, 3, 4, 5, 6, 7, and 8; each RA is independently selected from the group consisting of hydrogen or oxo, W is C3-C7-carbocycle or a 3- to 7-membered heterocycle(i.e., cyclopropyl), R6A, R6B , R10, R7B ,
R7A, R13, R15B, R16 , R17A, and R17B are hydrogen or alkyl.
Kim et al. ‘571 disclose three compounds, see RN: 2396607-21-7, 2396607-22-8 and 2396607-23-9. They clearly anticipate the instant compounds of formula IV-C1), wherein the A ring is an unsaturated, partially saturated, or saturated carbocyclic or heterocyclic ring containing 5 or 6 ring atoms (i.e., phenyl); m is an integer selected from the group consisting of 0, 1, 2, and 3; n is an integer selected from the group consisting of 0, 1, 2, 3, 4, 5, 6, 7, and 8; each RA is independently selected from the group consisting of hydrogen or oxo, W is C3-C7-carbocycle or a 3- to 7-membered heterocycle(i.e., cyclopropyl), R6A, R6B , R10, R7B , R7A, R13 , R15B, R16 , R17A, and R17B are hydrogen or alkyl.
6. Claims 16-20 are neither anticipated nor rendered obvious over the record, and therefore are allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to REI TSANG SHIAO whose telephone number is
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
December 30, 2025
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