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 CON of 18526935 12/01/2023 PAT 12145948, which is a CON of PCT/US23/72623 08/22/2023, which has PRO 63/507,357 06/09/2023, PRO 63/399,989 08/22/2022, and PRO 63/373,172 08/22/2022.
2. Claims 31-51 are pending in the application.
Double Patenting
3. 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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 31-51 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable independently over claims 1-26 of Kulyk et al. US 12,145,948. Although the conflicting claims are not identical, they are not patentably distinct from each other and reasons are as follows.
Applicants claim a method for treating a subject with cancer, said method comprising administering to the subject an effective amount of a compound of Formula (I):
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320
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, wherein A is N or CH; E1 is N or C(CN); E2 is C(R4) or N; and G is -L1-R3, L1a-R3a or -W-X-Y, and W is a bond, X is aryl or heteroaryl and Y is -C0-alkylene-N(Rd)-L2-R, see claim 31. Dependent claims 32-51 further limit the scope of compounds, i.e., specific formulae (Iva)-(Ivo), and specific compounds.
Kulyk et al. ‘948 claims a compound of formula (I), i.e.,
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178
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, wherein A is N or CH; E1 is N or C(CN), E2 is C(R4) or N,
G is -L1-R3 or -W-X-Y and W is a bond, X is aryl or heteroaryl and Y is -alkylene-N(Rd)-L2-R, see claim 1 columns 513-514. Specific formulae in claims 3-19 in columns
523-530, and specific compounds in claims 21-26 in columns 531-533. Kulyk et al. ‘948 compounds are used for treating cancer, see column30-49.
The difference between instant claims and Kulyk et al. ‘948 is that the instant claims are embraced within the scope of Kulyk et al. ‘948.
One having ordinary skill in the art would find the claims 31-51 prima facie obvious because one would be motivated to employ the methods of use of Kulyk et al. ‘948 to obtain the instant invention.
The motivation to make the claimed methods of use derived from the known
compounds and methods of use of Kulyk et al. ‘948 would possess same activity to that which is claimed in the reference.
Conclusion
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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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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
September 21, 2026
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