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 .
According to paper filed on Sep. 3, 2026, the applicants have canceled claim3; amended claims 1 and 4-11 and furthermore, have added new claims 12-15.
Claims 1-2 and 4-15 are pending in the application.
Response to Arguments
Applicants’ arguments filed Sep. 3, 2026 have been fully considered but they are not persuasive regarding prior art rejection of claim 7 over Liu (U.S. Patent 10, 188,743). The applicants have amended claims to overcome all other rejections. Regarding claim 7, compound 8c (RN 903855-01-2) disclosed in col. 16 by Liu (U.S. Patent 10,188,743) anticipates the 2nd compound in column 1 on page 5.
Conclusion
Rejection of claim 7 under 35 U.S.C. 102(a) (1) over Liu (U.S. Patent 10,188,743) is maintained.
NEW GROUNDS OF REJECTION
Claim Rejections - 35 USC § 112
6. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no written description for preparing and using instant compounds of claim 5 where all variables R5, R6 and R7 represent C (variable R1 represents carbocyclic ring). The only written description is for variable R1 to be heterocycloalkyl group.
9. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-6 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 4, for the value of variable R1, the term - - comprises - - - is vague and indefinite since it is not clear whether R1 represents 5-membered heterocycle or some other large unknown structure having 5-membered heterocycle embedded somewhere.
In claim 5, the value of variable n is not defined.
In claim 6, the term - - or analog thereof - - is vague and indefinite since its actual intent is not clear.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
13. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
14. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Liu (U.S. Patent 10,188,743).
Liu discloses compounds for treating cancer. The compound 7c (RN 287472-13-3) disclosed in column 16 by Liu meets all the limitations of 1st compound in column 2 on page 5 except that variable R4 represents Cl instead of Br. However, both Cl and Br are halogens and furthermore, Liu teaches interchangeability between Cl and Br at this position on the phenyl ring (see compounds of formula III in col. 12 as well as see compounds 10d and 10n). Therefore, it would have been obvious to one skilled in art to prepare instant compound with Br-substituted phenyl ring without affecting its utility for treating cancer with reasonable expectation of success. It is also of note that according to instant claim 1, variable R4 can represent any halogen.
15. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ladonato (WO 2016/073947 A1).
Ladonato discloses antiviral compounds. The compound 49 (see page 41) disclosed by Ladonato meets all the limitations of last compound (see page 6) except that variable R4 represents Br instead of Cl. However, both Cl and Br are halogens and furthermore, Ladonato teaches interchangeability between Cl and Br at this position on the phenyl ring since variable R6 can be Cl or Br (see paragraph 0067 on page 23). Therefore, it would have been obvious to one skilled in art to prepare instant compound with Cl-substituted phenyl ring without affecting its utility of antiviral activity with reasonable expectation of success. It is also of note that according to instant claim 1, variable R4 can represent any halogen.
Allowable Subject Matter
16. Claims 1-2 and 8-15 are allowed.
17. Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants’ 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.
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARANJIT AULAKH whose telephone number is (571)272-0678. The examiner can normally be reached Monday-Friday 7:00-3:30.
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/CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621
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