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 .
Application Status
The amendment filed on 7/1/2026 in response to the Non-Final rejection of 3/13/2026 is acknowledged. Claims 1, 6, 11, 13-16, 19-28, 30, 39, 41, 43, 45-46 and 49 are currently pending and under consideration.
Rejections Withdrawn:
The rejection of Claim 16 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of Applicants amendment to define “m”.
The rejection of Claims 30, 39, 41, 43, 45-46 and 49 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an in vitro method of inhibiting a cancer cell by administering a compound having the formula IA
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, wherein the ring bearing X1, X2 and X3 is
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, does not reasonably provide enablement for an in vivo method of treating cancer comprising administering any and all compounds encompassed by a compound of formula IA as claimed in claim 1 is withdrawn in view of Applicants amendments.
The rejection of Claim(s) 1, 6, 11, 13-16, 19-20, 24 under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1358960-59-4 (entered STN on 2012-03-01) is withdrawn in view of Applicants amendment to claim 1 to exclude Rb from comprising a piperidinyl ring.
The rejection of Claim(s) 1, 6, 11, 13-16, 19-21 and 24 under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1358396-79-8 (entered STN on 2012-02-29) is withdrawn in view of Applicants amendment to claim 1 to canceling halo as an option for R3.
New Rejections Necessitated by Applicants Amendments:
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.
Claim(s) 1, 6, 11, 13-16, 19-20 and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1358413-57-6 (Entered STN 2012-02-29).
CAS Registry No. 1358413-57-6 has the structure:
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which reads on the compound of formula I of claim 1, wherein the ring bearing X1, X2 and X3 is
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, R1 is an aliphatic linker, Rb is an N-containing group, R2 is a H, R3 is an heteroaliphatic and x is 1.
Claim(s) 1, 6, 11, 13-16, 19-20 and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1359153-66-4 (Entered STN 2012-03-01).
CAS Registry No. 1359153-66-4 has the structure:
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which reads on the compound of formula I of claim 1, wherein the ring bearing X1, X2 and X3 is
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, R1 is an aliphatic linker, Rb is an N-containing group, R2 is a H, R3 is an heteroaliphatic and x is 1.
Claim(s) 1, 6, 16 and 19-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1216870-43-7 (Entered STN 2010-04-05).
CAS Registry No. 1216870-43-7 has the structure:
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which reads on the compound of formula I of claim 1, wherein the ring bearing X1, X2 and X3 is
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, R1 is an aliphatic linker, Rb is an N-containing group, R2 is a H, and x is 0.
Claim(s) 1, 6, 11, 13-16 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1358266-88-2 (Entered STN 2012-02-29).
CAS Registry No. 1358266-88-2 has the structure:
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which reads on the compound of formula I of claim 1, wherein the ring bearing X1, X2 and X3 is
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, R1 is an aliphatic linker, Rb is an aliphatic group, R2 is an aliphatic, R3 is a heteroaliphatic and x is 1.
Claim(s) 1, 6, 11, and 13-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1358266-81-5 (Entered STN 2012-02-29).
CAS Registry No. 1358266-81-5 has the structure:
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which reads on the compound of formula I of claim 1, wherein the ring bearing X1, X2 and X3 is
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, R1 is an aromatic, Rb is an aliphatic group, R2 is H, R3 is a heteroaliphatic and x is 1.
Conclusion
Claims 22, 25-26 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 27-28, 30, 39, 41, 43, 45-46 and 49 are free of the prior art and allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON J FETTEROLF whose telephone number is (571)272-2919. The examiner can normally be reached M-F 6AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey S Lundgren can be reached at 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BRANDON J. FETTEROLF, PHD
Primary Patent Examiner
Art Unit 1626
/BRANDON J FETTEROLF/Primary Examiner, Art Unit 1626
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