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 .
Status of the Claims
Per Applicant’s amendment to the claims, submitted on 06/16/2026, claims are amended, claims 32-33 are canceled, and claims 36-45 are newly added. Currently, claims 1, 3-4, 22-27, 29, and 36-45 are pending in the instant application.
Claim Objections
Claim 1 is objected to because of the following informalities: Typographical error. Claim 1 recites the following IUPAC name:
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The recited name appears to have an extra parenthesis. The term “((S)” should read “(S)”. Appropriate correction is required.
Claim Rejections - 35 USC § 112 - Withdrawn
Rejections of claims 32-33:
In light of Applicant’s amendment to the claims the rejections are hereby withdrawn. Claims 32-33 have been canceled.
Claim Rejections - 35 USC § 102 - Withdrawn
Rejections of claims 1, 2-4, 22-29:
Applicant’s arguments are persuasive, the rejection is hereby withdrawn. The compound taught by Lee (previously referenced) is recited as an exclusionary proviso within claim 1.
Double Patenting – New Grounds of Rejection
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.
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Claims 1, 3-4, 22-27, 29, and 36-45 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 19/718,644 (reference application), filed on 06/24/2026. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at hand are directed towards exceedingly overlapping subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. The co-pending reference application was filed on 06/24/2026, after the previous Office Action was submitted (03/17/2026). Accordingly, Double Patenting rejections over the co-pending application are proper and necessitated.
Claim 1 of the instant application recites a compound of formula I:
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Wherein G1 is:
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Claim 1 of the reference application recites a compound of formula (I-b):
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Wherein G1 is:
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As can be seen from the above claims and their recited structures, the formulas I and I-b appear to have overlap in their structural limitations. Most notably, is the limitation in claim 1 of the instant application wherein variable G1 is structure (e):
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The above structure (e) falling within the limitations of G1 as recited in the reference application. As a result the there would likely be a degree of shared compounds between the indicated claims. Furthermore, newly added claims 36, and 40-42 recite the compound of claim wherein G1 is a structure of (e). Accordingly, the inventions at hand are overlapping in scope and cannot be considered as patentably distinct from one another.
Allowable Subject Matter
The prior art does not appear to teach or suggest the compounds of the instant claims. While the claims at hand contain allowable subject matter, they are not considered in allowable form due to the outstanding Double Patenting rejection.
The closest prior art is Lee (previously referenced). Lee is a commonly owned international patent application published prior the filing date of the instant application, but after the earliest effective filing date.
Lee teaches compounds as WDR5 inhibitors and uses thereof for the treatment of cancers. Of particular interest to the instant application is the following compound I-72 (page 65):
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The above compound meets the specification of a compound of formula (I) , however is explicitly excluded by proviso.
The teachings of Lee, while directed to compounds of similar structure and function, do not explicitly teach compounds which fall within the limitations of claim 1. While Lee may teach certain compounds which would otherwise fall within the bounds of the claim (such as the above compound I-72), they appear to be excluded by the proviso of claim 1.
Conclusion
Claims 1, 3-4, 22-27, 29, and 36-45 are rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ERIC TRAN/Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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