DETAILED ACTION
This action is in response to Applicant’s submission dated May 21, 2026, in which Applicant provided a species, Compound 84, for search purposes only. Once Compound 84 was not found in the art, a full search of the art was conducted.
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 .
Claim Rejections - 35 USC § 102
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 1-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Deng, et al., WO 2024/027370, which has a priority date from CN 2022-10928223 of August 3, 2022 that beats the instant priority date of September 26, 2022. Deng, et al. teaches the preparation of nitrogen-containing fused three ring compound as prmt5 inhibitors, which include instant compounds. Specifically, the compounds: 4-amino-N-[2,3-dihydro-6-(trifluoromethyl)-3-benzofuranyl]-N-methyl-imidazo[1,5-a]quinoxaline-8-carboxamide:
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and 4-amino-N-[2,3-dihydro-6-(trifluoromethyl)-3-benzofuranyl]-N-ethyl-imidazo[1,5-a]quinoxaline-8-carboxamide:
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, 4-amino-N-[2,3-dihydro-6-(trifluoromethyl)-3-benzofuranyl]-N-(2,2,2-trifluoroethyl)-imidazo[1,5-a]quinoxaline-8-carboxamide,
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262
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, 4-amino-N-bicyclo[1.1.1]pent-1-yl-N-[2,3-dihydro-6-(trifluoromethyl)-3-benzofuranyl]-imidazo[1,5-a]quinoxaline-8-carboxamide,
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160
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, 4-amino-N-[2,3-dihydro-6-(trifluoromethyl)-3-benzofuranyl]-N-(1-methyl-1H-p yrazol-4-yl)-imidazo[1,5-a]quinoxaline-8-carboxamide,
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290
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, 4-amino-N-[3,4-dihydro-7-(trifluoromethyl)-1H-2-benzopyran-4-yl]-N-methyl-imidazo[1,5-a]quinoxaline-8-carboxamide
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182
434
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, 4-amino-N-[2,3-dihydro-6-(trifluoromethyl)-3-benzofuranyl]-N-(1-ethyl-1H-py razol-4-yl)-imidazo[1,5-a]quinoxaline-8-carboxamide
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, 4-amino-7-chloro-N-[2,3-dihydro-6-(trifluoromethyl)-3-benzofuranyl]-N-(1-me thyl-1H-pyrazol-4-yl)- imidazo[1,5-a]quinoxaline-8-carboxamide,
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, 4-amino-N-[(3S)-2,3-dihydro-6-(trifluoromethyl)-3-benzofuranyl]-N-1H-pyrazo l-4-yl-imidazo[1,5-a]quinoxaline-8-carboxamide,
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and 4-amino-N-[(3S)-2,3-dihydro-6-(trifluoromethyl)-3-benzofuranyl]-7-fluoro-N-(1-methyl-1H- pyrazol-4-yl)-imidazo[1,5-a]quinoxaline-8-carboxamide,
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of the reference anticipates the aforementioned claims where one of n and o is 1 and the other is 0 or 1, W is C, R’ is C1alkyl (methyl or ethyl unsubstituted or tri-substituted with fluoro), C5cycloalkyl, or unsubstituted 5-membered heteroaryl or substituted with C1-2alkyl (methyl or ethyl), RL and RL’ are both H, X1 is CRX1, X2 is CRX2, X3 is CRX3, X4 is CRX4, X5 is CRX1, X6 is CRX6, RX1 is H or halogen (chloro or fluoro), RX2 is H, RX3 is H, RX4 is C1haloalkyl (CF3), RX5 is H, CRX6 is H, Y1 is CRY1, RY1 is H, Y2 is N, Y3 is CRY3, CRY3 is H, and M1 is O. The references compounds exhibit the same activity as the compounds of the instant claims.
Information Disclosure Statement
The references contained in the IDS dated December 24, 2025 are made of record.
Double Patenting
The non-statutory 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. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); 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); 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) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-26 of United States Patent Application No. 18/925,084, which published as US 2025/0051331 A1. Although the conflicting claims are not identical, they are not patentably distinct from each other because there is substantial overlap between instant n and o, W, RL, RL’, X1, X2, X3, X4, X5, X6, Y1, Y2, Y3, M1, and their equivalent groups in the compounds of the reference. This obviousness-type double patenting rejection is provisional because the conflicting claims have not in fact been patented.
Claims 1-19 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-16 of United States Patent Application No. 12, 173,002. Although the conflicting claims are not identical, they are not patentably distinct from each other because there is substantial overlap between instant n and o, W, RL, RL’, X1, X2, X3, X4, X5, X6, Y1, Y2, Y3, M1, and their equivalent groups in the compounds of the reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to ERICH A LEESER whose telephone number is (571) 272-9932. The Examiner can normally be reached Monday through Friday from 10-6 PST, M-F. PST.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Mr. James Alstrum-Acevedo can be reached at (571) 272-5548. The fax number for the organization where this application is assigned is 571-273-8300.
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/ERICH A LEESER/Primary Examiner, Art Unit 1622
United States Patent and Trademark Office
Tel. No.: (571) 272-9932
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