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 .
Current Status of 18/692,114
This Office Action is responsive to the amended claims of 4/29/2026.
Claims 9, 12-13 have been examined on the merits.
Claim 9 is amended and claims 12 and 13 are new.
Priority
This Application is a national stage entry of PCT/CN2022/119825 and also claims foreign priority to CN202111108417.6. There is also a continuation, which is now a US patent 12151999.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The translation of the foreign priority document has been submitted. The conditions of 35 U.S.C. § 119(a)-(d) or (f) have been met.
Therefore, the effective filing date for the instant claims is 09/22/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/29/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicants’ claim amendments and Remarks of 04/29/2026 are acknowledged and have been considered.
Any rejection and/or objection not specifically addressed or modified below is herein withdrawn.
In regard to the 102 rejection, Applicants amended the claims to exclude this compound used in the Nonfinal rejection.
Applicants submit the English Translation of the Chinese Priority Application and the translation verification. Foreign priority has been perfected.
Response to Amendment
Claim Objections
Claim 9 is objected to because of the following informalities: Claim 9 flows poorly. The limitation describing the disclaimed compound (on page 2 of the instant claims) is before the limitations defining the variables for formula (I). The definitions for formula (I) should be immediately after the pictured structure of formula (I) in order to be most clear for the reader (and to not imply that they are somehow part of the proviso). Appropriate correction is required.
Claim Rejections - 35 USC § 102
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) 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by LAWRENCE (WO 2010005534 A2), previously cited.
LAWRENCE anticipates a compound with a CAS# of 1204290-86-7 (page 86 line 20), which is depicted below.
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This compound is a compound of formula (I) wherein the number of R5 is 0, R2 is H, R4 is -SO2R4-1, R4-1 is a 5 membered monocyclic heteroaryl, R1is H, Z is -SO2-, and R3 is
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, and R3-1 is C2alkoxy. This anticipates claim 9.
LAWRENCE anticipates pharmaceutically acceptable salts of formula I (page 3), which the compound described above is a compound of Formula I. LAWRENCE anticipates stereoisomers of formula I (page 19). This anticipates claim 9.
Claim(s) 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by GE (Ge et al., “Discovery and Synthesis of Hydronaphthoquinones as Novel Proteasome Inhibitors”, Journal of Medicinal Chemistry, January 5, 2012).
GE anticipates a compound with a CAS# 1204290-89-0P (page 1979, PI-8182). This compound is a compound of formula (I) wherein the number of R5 is 0, R2 is H, R4 is -SO2R4-1, R4-1 is a 5 membered monocyclic heteroaryl, R1is H, Z is -SO2-, and R3 is
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, and R3-1 is -CH2C(O)OR3-2, and R3-2-is H.
GE anticipates a compound with a CAS# 1204290-86-7P (page 1980, compound 10e). This compound is a compound of formula (I) wherein the number of R5 is 0, R2 is H, R4 is -SO2R4-1, R4-1 is a 5 membered monocyclic heteroaryl, R1is H, Z is -SO2-, and R3 is
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, and R3-1 is C2alkoxy.
This anticipates claim 9.
Claim(s) 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by LAWRENCE (WO2010102286).
LAWRENCE anticipates a compound with a CAS# of 1204290-86-7 (page 86) and a compound with a CAS# of 1204290-89-0 (page 86). The compound with CAS# of 1204290-86-7 is a compound of formula (I) wherein the number of R5 is 0, R2 is H, R4 is -SO2R4-1, R4-1 is a 5 membered monocyclic heteroaryl, R1is H, Z is -SO2-, and R3 is
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, and R3-1 is C2alkoxy.
The compound with CAS# of 1204290-89-0 is a compound of formula (I) wherein the number of R5 is 0, R2 is H, R4 is -SO2R4-1, R4-1 is a 5 membered monocyclic heteroaryl, R1is H, Z is -SO2-, and R3 is
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, and R3-1 is -CH2C(O)OR3-2, and R3-2-is H.
Close Art
Anand (Anand et al., “Azoic dyes. IX. The behavior of 2-benzoylacetyl-1-napthol towards diazonium salts”, Department of Chemical Technology, University of Bombay, August 17, 1948) discloses a compound with a CAS# 860680-96-2 (page 546). This compound is a compound of formula (I) wherein the number of R5 is 0, R2 is H, R4 is
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, R4-1 is phenyl, R1is H, Z is
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, and R3 is
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, and R3-1 is phenyl. This is not prior art because R3-1 is phenyl and that is not an option for the instant Formula I. There is no teaching, motivation, or suggestion to modify this compound to an instant R3-1 option.
The compound from instant claims 12 and 13 was indexed into ACS after the effective filing date, see below.
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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.
Claims 9, 12 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. application 18995266. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate the instant claims.
Reference claim 1 anticipates the compound from instant claim’s 12 and 13. This anticipates instant claims 9, 12, and 13.
Claim 9, 12, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of copending Application No. 18994467 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate the instant claims.
The reference claims 1 and 5 (specifically claim 5)’s compound I-1 anticipates the instant claims’ I-1. This anticipates instant claims 9, 12, and 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 9, 12 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12151999. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the instant claim.
Reference claim 1 is word for word almost the same, except for the reference proviso disclaims another additional compound.
Conclusion
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.
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/G.A.H./ Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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