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 .
DETAILED ACTION
Claims 1, 2, 6, 7, 10, 13, 16, 17, 21, 24, 27, 29, 33, 35, 38, 39, 43 and 47-49 are pending in the application. Claims 10, 29 and 39 are rejected. Claims 1, 7, 13, 24, 29, 38, 39, 47 and 48 are objected to. Claims 2, 6, 16, 17, 21, 27, 33, 35, 43 and 49 are allowable.
Priority
This application is a 35 U.S.C. § 371 National Stage Filing of International Application No. PCT/US2023/017384, filed on April 4, 2023, which claims benefit of Provisional Application No. 63/327,631, filed on April 5, 2022.
Information Disclosure Statement
The Information Disclosure Statement(s) (IDS) filed on September 8, 2025 is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the Examiner has considered the IDS documents and signed copies of the 1449 forms are attached.
Claim Objections
Claims 1, 7, 13, 24, 29, 38, 39, 47 and 48 are objected to because of the following informalities:
Claim 1 should be amended to replace the recited generic structure of Formula (A) with a larger structure for sake of clarity.
Claim 7 should be amended to ensure “(II-7)” and “(II-8)” are located together with their respective structural formulas (i.e., on same page) for sake of clarity.
Claim 13 should be amended to cancel the duplicate recitation of variable “OH” (indicated below) for sake of clarity. See page 13.
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Claim 24 should be amended to cancel the expression “optionally wherein” for sake of clarity and consistency.
Claim 29 should be amended to recite “R2 and R3 are each independently C1-C4 alkyl; [[and]] R4 is halo[[,]]; and
Claim 38 should be amended to recite, “the [[a]] compound of claim 1” for sake of clarity and consistency.
Claim 39 should be amended to recite, “comprising administering to a subject in need thereof an effective amount of the [[a]] compound of claim 1” for sake of clarity and consistency.
Claim 47 should be amended to recite, “comprising administering to the subject” for sake of clarity.
Claim 48 should be amended to recite, “the [[a]] compound of claim 1” for sake of clarity and consistency.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 10 and 39 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.
Claim 10 recites the limitation “...wherein the...thiadiazolyl” in the definition for variable “R1” and is rejected as indefinite. See 16th line of claim 10. There is insufficient antecedent basis for this limitation in the claim as Applicant has further limited variable “R1” to alternatives of which “thiadiazolyl” is not included.
Claim 39 recites the limitation “brain cancers (glioma)” and is rejected as indefinite. Firstly, it is unclear how “a cancer” (i.e., singular entity) can properly be described as being “brain cancers” (i.e., plural entity). In addition, it is unclear whether Applicant intended the parenthetical expression “(glioma)” to be considered further limiting of “brain cancer[].” See MPEP 2173.05(d). It is suggested Applicant amend claim 39 to recite, “brain cancer[[s]]
Claim 39 recites the expression “the cancer in the subject in need thereof has metastasized” and is further rejected as indefinite. It is unclear whether Applicant intended claim 39 to be drawn towards a) any and all metastasized cancers or b) metastasis of the cancers recited in (i) and/or (ii). The instant specification appears to support interpretation b) as seen, for instance, on page 99 which discloses the following:
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.
It is, therefore, suggested that Applicant amend claim 39 to limit the “cancer” as recited in the expression “the cancer in the subject in need thereof has metastasized” to those cancers recited in (i) and/or (ii) of the claim to overcome the issue of indefiniteness and to avoid potential lack of enablement issues.
Claim Rejections - 35 USC § 112(d)
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.
Claims 10 and 29 are 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 10 recites the following alternatives for variable “R1”:
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. See bottom of page 9. Each of the aforementioned alternatives do not derive support from parent claim 1 which does not provide for “C1-C4alkyl” (i.e., with respect to variable “R1”) to be substituted with variable “R11.” Therefore, claim 10 fails to include all the limitations of parent claim 1.
Claim 29 recites
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as an alternative for variable “R1.” However, neither parent claims 1 nor 27 provides for an instance wherein variable “R1” is defined as an alkyl group substituted with “R11.” Therefore, claim 29 fails to include all the limitations of parent claims 1 and 27.
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.
Allowable Subject Matter
Claims 2, 6, 16, 17, 21, 27, 33, 35, 43 and 49 are allowable. Claims 1, 2, 6, 7, 10, 13, 16, 17, 21, 24, 27, 29, 33, 35, 38, 39, 43 and 47-49 are free of the prior art. With the exception of the claim objections (i.e., claims 1, 7, 13, 24, 29, 38, 39, 47 and 48) and claim rejections (i.e., claims 10, 29 and 39), the instant claims are otherwise allowable.
Conclusion
Claims 10, 29 and 39 are rejected. Claims 1, 7, 13, 24, 29, 38, 39, 47 and 48 are objected to. Claims 2, 6, 16, 17, 21, 27, 33, 35, 43 and 49 are allowable.
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/D.M.S./Examiner, Art Unit 1626
/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626
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