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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 13, 2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group I, drawn to a compound of Formula (I) to Formula (VI), and a compound 4 having the structure of:
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as the elected compound species are maintained.
Claims 2-4, 6-7, 9-11 and 16-18 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.
Expansion of Election of Species Requirement
A reasonable and comprehensive search of the elected species conducted by the Examiner determined that the prior art at the time of the present invention was such that it did not anticipate or render obvious the elected compound species:
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.
In light of this discovery, a new search is conducted as necessitated by claim amendments, and said search is expanded to the subject matter of the subgenus of the elected species, i.e., the compound having the structure of:
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, such that it does not encompass the full scope of the claims.
Priority
The instant application 17/275,860 filed on March 12, 2021 is a 371 of PCT/US2019/050573 filed on September 11, 2019, which claims priority to, and the benefits of U.S. Provisional Application No. 62/730,464 filed on September 12, 2018.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/730,464, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. While the prior-filed application discloses formula (III)
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and R1-R3, it fails to disclose the elected compound species:
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. The prior-filed application only discloses a single species of compound of formula (III):
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. To the extent that the claims are drawn to a species of compound of Formula (III) that is not a compound 3 (e.g., the elected compound species), these claims are not entitled to the benefit of the prior-filed application and will receive an effective filing date of September 11, 2019, which is the filing date of PCT/US2019/050573.
Status of Claims
Acknowledgement is made of the receipt and entry of the amendment to the claims filed on December 23, 2025, wherein claims 1 and 13 are cancelled; claims 2-7, 9-12 and 14-21 are unchanged; and claims 8 and 22 are amended.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 2-12 and 14-22 are pending.
Claims 2-4, 6-7, 9-11 and 16-18 remain withdrawn.
Claims 5, 8, 12, 14-15, and 19-22 are under examination in accordance with the elected species along with the expanded compound set forth in the Expansion of Election of Species Requirement section above.
Action Summary
Claim 22 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 are withdrawn in light of the claim amendments.
Claims 5, 8, 12, 14-15 and 22 rejected under 35 U.S.C. 103 as being unpatentable over Palkowitz et al. (US 5,492,922; cited in the previous Office Action mailed on September 19, 2024) in view of Wang et al. (WO 2016/004166A1) are withdrawn in light of the claim amendments.
Claims 5, 8, 12, 14-15, 19 and 22 rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (WO 2016/097071 A1; cited in the previous Office Action), in view of Patani et al. (Chemical reviews, 1996. Vol. 96, 8: 3147-3176) are withdrawn in light of the claim amendments.
Claim Interpretation
The limitation of “wherein said pharmaceutical composition is suitable for oral administration.” in claim 14, and the limitation of “wherein said composition is suitable for parenteral administration” in claim 15, are reasonably construed to be an intended use of the pharmaceutical composition instantly claimed. Since the claim is interpretated to be a product, the intended use of the pharmaceutical composition does not further limit the pharmaceutical composition per se; and therefore, if the prior art(s) meet the structural limitation of the pharmaceutical composition, it is capable of performing the intended use.
Claim Objections
Claim 15 is objected to because of the following informalities:
Regarding claim 15, the recitation of “said composition” should read --said pharmaceutical composition—, such that it is being consistent with the recitation of “pharmaceutical composition” in the preamble.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 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 for establishing a background for determining obviousness under 35 U.S.C. 103 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 nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5, 8, 12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (WO 2016/097071 A1; cited in the previous Office Action), in view of Wang et al. (WO 2016/004166A1; cited in the previous Office Action).
Smith et al. teaches a compound of Example 11, 3-(4-(2-(3-(Fluoromethyl) azetidin-1-yl) ethoxy) phenoxy)-2-(4-hydroxyphenyl) benzo[b]thiophen-6-ol, having the structure of:
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is a compound of Formula I and an estrogen receptor modulator (see e.g., Table 1, Example 11; page 2, line 11-16). Smith et al. further teaches a pharmaceutical composition refers to a mixture of the compound of Formula (I) or a pharmaceutically acceptable salt thereof, with other chemical components (i.e. pharmaceutically acceptable inactive ingredients), such as carriers and excipients (see e.g., p. 114, line 9-13). Smith et al. further teaches the pharmaceutical formulation can be administered to a subject by appropriate administration routes, including oral and parenteral (see e.g., p. 114, line 22-30; p. 115, line 22-30; p. 120, line 15-17). Smith further teaches in some embodiments, compounds described herein are prepared as prodrugs; and a
“prodrug” refers to an agent that is converted into the parent drug in vivo (see e.g., p. 101, line 21-22). Smith et al. further teaches prodrugs of the compounds described herein include, but are not limited to, esters (see e.g., p. 102, line3-4).
Smith et al. does not teach a compound of Formula (III).
Wang et al. teaches many active drug molecules contain one or more substituted or unsubstituted phenolic groups, or aromatic hydroxyl groups, and are amenable to the described boron-based modification towards desired prodrugs for enhancement in bioavailability and bio-retention and, in particular, significantly lower the therapeutically effective dosage to reduce adverse effects (see e.g., [0005]). Wang et al. further teaches the boron-containing prodrugs are compounds of the formula (I):
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, wherein R is, inter alia,
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, and wherein the R substituent point of attachment to a substituted or unsubstituted phenolic group or aromatic hydroxyl group of a drug molecule is on R the substituent boron atom (see e.g., [0019]; [0021]-[0022]). Wang et al. teaches a method to prepare and use boron-based prodrugs of phenol- or aromatic hydroxyl group-containing therapeutic molecules for the purpose of improved bioavailability, prolonged retention in patients’ body, especially in the blood circulatory system (see e.g., [0017]); and that reduce adverse effects while maintaining the desired therapeutic effects of the original drugs (see e.g., abstract). Wang et al. further teaches an example of boron-containing prodrugs as shown below (see e.g., Table 1):
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. Wang et al. further teaches a pharmaceutical composition in the form of at least one boron-containing prodrug for treatment of diseases and/or symptoms that are meant to be treated by the original drug molecule (i.e., the prodrug molecule with an -OH moiety in place of the prodrug R moiety) (see e.g., [0023]). Wang et al. further teaches the pharmaceutical compositions can be in any form known to those of skill in the art, for instance, a form of a product for oral delivery or parenteral administration (see e.g., [0025]).
In the present case, the difference between the compound of Example 11 of Smith et al. and the claimed compound of Formula (III) is that the prior art compound has hydroxy (-OH) rather than
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at R1 shown below (see shaded):
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It would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to select a compound of Example 11 of Smith et al., and then modify said compound by replacing the hydroxy (-OH) substituted on the benzene ring of benzo[b]thiophen with a R group having the structure of:
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as taught by Wang et al. to arrive at the claimed invention. One would have been motivated to do so, because Smith et al. teaches the compound can be prepared as prodrugs, including esters; and Wang et al. teaches the pinacolyl boronate ester prodrugs of phenol-containing drugs are prepared by replacing the phenolic hydroxyl with a R group, including
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, in order to enhance bioavailability and bioretention; and said boron-containing prodrug is useful for treating diseases and/or symptoms that are meant to be treated by the original drug molecule. One would have reasonable expectation of success to arrive at the claimed invention, because one would have reasonably expected that by modifying the compound of Example 11 of Smith et al. in to a boron-containing prodrug taught by Wang et al. would have exerted the same or substantially similar estrogen receptor modulating activity as the compound of Example 11 of Smith, but with improved bioavailability
; and therefore, said modified compound can successfully be incorporated with a pharmaceutically acceptable carrier or a pharmaceutically acceptable excipient to arrive a pharmaceutical composition, and that renders obvious the limitation of “suitable for oral administration” in claim 14 and “suitable for parenteral administration” in claim 15.
Therefore, the claimed invention is prima facie obvious to one of ordinary skill in the art at the time the application was filed, absent factual evidence to the contrary.
Free of the Art
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in an independent form.
Claim 19 is free of the art; and are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 21 and 22 are also free of the art. They are objected only due to dependence on a rejected base claim. However, all two claims together-when rewritten in a single independent claim that incorporates all limitations of the base claim and any intervening claims-would be allowable.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Chihyi Lee whose telephone number is (571)270-0663. The examiner can normally be reached Monday - Friday 8:30 am - 5:00 pm EST.
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/CHIHYI LEE/Examiner, Art Unit 1628 /JEAN P CORNET/Primary Examiner, Art Unit 1628