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 .
Priority
This application was filed 07/31/2024 and is a 371 of PCT/US2023/012145 (02/01/2023) which has PRO 63/305668 (02/01/022). Claims 1, 3, 7, 10,12-13, 14, 20-21, 24, 26, 34-35, 37, 42, 44, 52, 56 59 and 60 are before the Examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 depends on claim 2, which has been cancelled. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 44 and 52 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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. Specifically, the claims depict structures of compounds that are being claimed. However, the structures have errant markings that make the structures unclear. Specifically, page 49 last line structures #1 & 2; page 50 structures # 1, 2, 2, 4, 5, 7, 8 and 11; and page 71 last compound. There might be more structures with the same problems, so it is recommended that applicant check the claims for other problems.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 7, 10, 12, 13, 17, 20, 21, 24, 26, 56, 59 and 60 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by USPGPub 20240108654 Kugler. Kugler teaches the following: claims 1&3: form (III) page 4 and (IIIa) page 4; claim 7 page 4 R10=CN (iii); claim 10 page 4 R2=Me; claim 12 n=0, m=1 R4=Me; claim 13 R2=CN or H; claim 17 R15= alkyl substituent with aryl being optionally substituted; claim 20 is page 4 #2; claim 21 page 4 #2 alkyl; claim 24 page 4 #5 or (iv) R25=halogen; claim 26 where R20=Me page 4; claim 56 the compound treats cancer therefore the must be a pharmaceutical composition; claims 59&60 claim 48 claims treatment of cancer. These claims are anticipated by Kugler.
Claims 1, 3, 7, 10, 12, 13, 17, 20, 21, 24, 26, 37, 56, 59 and 60 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO2021258010. WO teaches compounds #23 and 24 on page 32 of 197 that anticipate the instant claims as a treatment for cancer and as a pharmaceutical composition.
Claims 1, 3, 7, 10, 12, 13, 17, 20, 21, 24, 26, 56, 59 and 60 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 11866430 Chupak. Chupak teaches the treatment of cancer with a compound of formula (I) on col 3
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that anticipates the instant claims. The definitions for the various variables follow.
Claims 1, 3, 7, 10, 12, 13, 17, 20, 21, 24, 26, 37, 56, 59 and 60 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 11713316 Velaparthi. Velaparthi teaches
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compounds #17 (col 114) (col 1139) that anticipate the instant claims as a treatment for cancer and as a pharmaceutical composition.
Claims 1, 3, 7, 10, 12, 13, 17, 20, 21, 24, 26, 34, 35, 37, 56, 59 and 60 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 11964973 Gentles. Gentles teaches compounds such as C19 line 1
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as well as exaple 49 and example 1 as a pharmaceutical composition that treats cancer. This anticiaptes the isntant claims.
Claims 1, 3, 7, 10, 12, 13, 17, 20, 21, 24, 26, 37, 42, 56, 59 and 60 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 12077538 Lu. Lu teaches
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and compounds #8 and 9 column 60 that anticipate the instant claims as a treatment for cancer and as a pharmaceutical composition.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D MARGARET M SEAMAN whose telephone number is (571)272-0694. The examiner can normally be reached M-F 8am-4pm Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D MARGARET M SEAMAN/Primary Examiner, Art Unit 1625
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