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
Priority and Status of the Claims
1. This application is a 371 PCT/US2023/065755 04/14/2023, claims benefit of the provisional application: 63330944 04/14/2022
2. Claims 1-4,8,10,18,31 and 34-60 are pending in the application.
3. 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 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.
Claim Rejections - 35 USC § 103
4. The following is a quotation of 35 U.S.C. 103(a) 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-4,8,10,18,31 and 34-60 are rejected under 35 U.S.C. 103(a) as being
obvious over Breslin et al. US 9,663,535.
Applicants claim a compound/composition of formula (I), i.e.,
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310
516
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Greyscale
, wherein L is alkylene optionally substituted with oxygen, R1-R7 are hydrogen or alkyl, see claim 1. Dependent claims 2-4,8,10,18,31 and 34-60 further limit the scope of compounds, i.e., specific variables R1-R7, specific compounds, and methods of use for treating cancer.
Determination of the scope and content of the prior art (MPEP §2141.01)
Breslin et al. ‘535 discloses a compound/composition of the formula, i.e.,
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276
426
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Greyscale
, wherein W is C(R6)(R7), R4 and R5 are hydrogen, T is -CH2 or O, and Li s aliphatic chain optionally substituted with -O-, see claim 15 in column 155. Breslin et al. ‘535 compounds are used for treating cancer, see column 3.
Determination of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claims and Breslin et al. ‘535 is that the instant claims are embraced within the scope of Breslin et al. ‘535.
Finding of prima facie obviousness-rational and motivation (MPEP §2142-2143)
One having ordinary skill in the art would find the claims 1-4,8,10,18,31 and 34-60 prima facie obvious because one would be motivated to employ compounds/ compositions of Breslin et al. ‘535 to obtain instant invention.
The motivation to make the claimed compounds/composition derived from the known compounds/compositions of Breslin et al. ‘535 would possess similar activity to that which is claimed in the reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REI TSANG SHIAO whose telephone number is (571)272-0707. The examiner can normally be reached on 8:30 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached on 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
July 22, 2026
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