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 .
Claim Status
Claims 1, 5, 9, 14-21, 28, 31, 44, 47, 178, 182, 188-189 and 203 are pending. Claims 1, 5, 9, 14-19, 21, 28, 31, 44, 182, and 188-189 are rejected. Claims 47 and 178 are objected to.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/05/2026 has been entered.
Response to Amendment
Applicant’s amendments have overcome the previously presented rejections under 35 USC 112 and 102.
Priority
Applicant’s claim for the benefit of a prior-filled application under U.S.C. 119(e) or under 35 U.S.C. 120, 121 or 365(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 of 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., 35 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, U.S. Provisional No. 62/812,013, 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 claim 203 of this application. The disclosure only recites compounds A1-A210 of claim 203.
For this reason, the earliest priority date for claim 203 is February 28th, 2020.
Claim Objections
Claim 203 is objected to because of the following informalities: the claim lacks a period. Appropriate correction is required.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2395619-42-6, which entered Registry on December 20th, 2019.
CAS Registry No. 2395619-42-6 is drawn to N-(5-Fluoro-4-methyl-2-thiazolyl)-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A42 and has the following structure:
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212
366
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249431-31-8, which entered Registry on November 18th, 2018.
CAS Registry No. 2249431-31-8 is drawn to N-[4-(1-Methylpropyl)-2-thiazolyl]-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A23 and has the following structure:
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200
412
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249556-84-9, which entered Registry on November 19th, 2018.
CAS Registry No. 2249556-84-9 is drawn to N-[5-Methyl-4-(1-methylethyl)-2-thiazolyl]-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A38 and has the following structure:
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210
394
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249407-84-7, which entered Registry on November 18th, 2018.
CAS Registry No. 2249407-84-7 is drawn to N-(5-Ethyl-4-methyl-2-thiazolyl)-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A43 and has the following structure:
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228
396
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249039-23-2, which entered Registry on November 18th, 2018.
CAS Registry No. 2249039-23-2 is drawn to N-(4-Cyclopropyl-5-methyl-2-thiazolyl)-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A47 and has the following structure:
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208
396
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249024-22-2, which entered Registry on November 18th, 2018.
CAS Registry No. 2249024-22-2 is drawn to 1-(4-Pyridinylmethyl)-N-(4,5,6,7-tetrahydro-2-benzothiazolyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A52 and has the following structure:
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174
396
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249168-02-1, which entered Registry on November 18th, 2018.
CAS Registry No. 2249168-02-1 is drawn to N-[5-(1,1-Dimethylethyl)-2-thiazolyl]-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A54 and has the following structure:
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192
408
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249403-87-8, which entered Registry on November 18th, 2018.
CAS Registry No. 2249403-87-8 is drawn to N-[5-(1-Methylethyl)-2-thiazolyl]-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A55 and has the following structure:
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202
390
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249058-34-0, which entered Registry on November 18th, 2018.
CAS Registry No. 2249058-34-0 is drawn to N-(5,6-Dihydro-4H-cyclopentathiazol-2-yl)-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A56 and has the following structure:
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198
360
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249580-71-8, which entered Registry on November 19th, 2018.
CAS Registry No. 2249580-71-8 is drawn to N-[5-(2-Methylpropyl)-2-thiazolyl]-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A57 and has the following structure:
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222
414
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249352-69-8, which entered Registry on November 18th, 2018.
CAS Registry No. 2249352-69-8 is drawn to N-(5-Propyl-2-thiazolyl)-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A62 and has the following structure:
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202
426
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249168-10-1, which entered Registry on November 18th, 2018.
CAS Registry No. 2249168-10-1 is drawn to N-(5-Ethyl-2-thiazolyl)-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A65 and has the following structure:
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196
384
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249195-99-9, which entered Registry on November 18th, 2018.
CAS Registry No. 2249195-99-9 is drawn to N-Ethyl-N-(4-methyl-2-thiazolyl)-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A98 and has the following structure:
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178
372
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249129-06-2, which entered Registry on November 18th, 2018.
CAS Registry No. 2249129-06-2 is drawn to 1-(4-Pyridinylmethyl)-N-thiazolo[4,5-b]pyrazin-2-yl-1H-pyrrole-2-carboxamide, which is identical to instant compound A115 and has the following structure:
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172
382
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249462-13-1, which entered Registry on November 18th, 2018.
CAS Registry No. 2249462-13-1 is drawn to N-2-Benzothiazolyl-N-methyl-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A116 and has the following structure:
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184
384
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249492-50-8, which entered Registry on November 18th, 2018.
CAS Registry No. 2249492-50-8 is drawn to N-[5-(2-Hydroxyethyl)-2-thiazolyl]-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A119 and has the following structure:
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202
430
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.
Claim 203 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2249143-21-1, which entered Registry on November 18th, 2018.
CAS Registry No. 2249143-21-1 is drawn to N-[4-(2-Hydroxyethyl)-2-thiazolyl]-1-(4-pyridinylmethyl)-1H-pyrrole-2-carboxamide, which is identical to instant compound A120 and has the following structure:
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202
434
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.
Double Patenting
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. A nonstatutory 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 nonstatutory 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 nonstatutory 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, 14-17, 19-21, 28, 31, 44, 182, 188-189 and 203 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10-11, 17, 21, 26, 39, 43, 45, 47, 49, 51, 62, 64 and 196 of co-pending Application No. 18/019,885 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 64 discloses the following compound (Table A):
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191
342
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.
Compound A52 is embraced by instant Formula (III) where R4 is methyl, m is 1, L2 is C1 alkylene, R2 is H, L1-B is
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139
157
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and there are 0 instances of G and E (corresponding to instant claims 1, 14-17, 19-21, and 31).
Regarding instant claim 203, the co-pending application discloses the following compound in claim 64:
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235
341
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.
Compound A21 is analogous to instant compound A275 depicted below:
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181
363
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.
Co-pending compound A21 differs from instant compound A275 by the presence of a methyl substituent where the instant compound has a hydrogen. “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.” In re Deuel 34 USPQ2d 1210 at 1214. Furthermore MPEP 2144.09 (II) states: “Compounds which are […] homologs (…) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).” It is well established that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, 199 U.S.P.Q. 137 (C.C.P.A. 1978) and In re Lohr, 137 U.S.P.Q. 548, 549 (C.C.P.A. 1963).
The motivation to make a substitution of a hydrogen for an alkyl group stems from the fact that a person having ordinary skill in the art would expect that the compounds would have the same utility as the compounds taught by the co-pending application. In the interest of generating additional compounds that have the same utility as the compounds taught by the co-pending application, a person having ordinary skill in the art would seek to make additional compounds that are most closely related to compounds specifically taught by the co-pending application that have been demonstrated to have the desired utility. The replacement of hydrogen for an alkyl group falls under the well-established doctrine of homology, which assumes that homologous compounds are likely to have similar properties. Therefore, the instantly claimed compound which differs by hydrogen/alkyl, over the compound of the co-pending application is unpatentable absent a showing of unexpected results. MPEP 2144.09 (VIII) states “A prima facie case of obviousness based on structural similarity is rebuttable by proof that the claimed compounds possess unexpectedly advantageous or superior properties. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963).”
The resulting compound would read on instant claims 1, 14-17, 19-21, 28 31 and 44.
Regarding instant claims 188-189, with respect to the fact that the claims of the co-pending case are drawn to compounds and compositions while the instant claims are drawn to methods of treating cancer, inflammation or an inflammatory disease, Applicant is directed to Sun Pharmaceutical Industries Ltd. v. Eli Lilly and Co. 95 USPQ2d 1797, Geneva Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373 [68 USPQ2d 1865] (Fed. Cir. 2003), and Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353 [86 USPQ2d 1001] (Fed. Cir. 2008) for analogous situations. The instantly claimed utility is disclosed in paragraphs [0010] and [0011] of the co-pending application.
Instant claim 182 recites a method of inhibiting protein secretion in a cell comprising contacting the cell with the instant compounds in an effective amount. A person of ordinary skill would recognize this as a natural consequence of administering the compound to treat a disease where it would be expected to contact the recited proteins in the biological system.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5, 9, 15-19, 21, 28, 31, 44, 182, and 188-189 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 11, 14-17, 20-21, 23, 28, 32, 34, 38-40, 42, and 49-50 of copending Application No. 18/841,805 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 38 discloses compounds from Table A or B including the following:
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162
430
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178
432
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.
Regarding instant claims 1, 5, 9, 15-19, 21, 28, 31, 44, 182, and 188-189, copending compound B18 is embraced by instant formula (III) where R4 is absent (m is 0), L2 is C1alkylene, R2 is H, L1-B is
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116
184
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, G is N(RN)2, RN is H.
Copending compound B22 reads on instant claims 1, 5, 9, 15, 17-18, 20-21, 31, 182, and 188-189 where R4 is F (m is 1), L2 is C1alkylene, R2 is H, L1-B is
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122
114
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, and there are 0 instances of G.
Regarding instant claim 182, copending claim 42 recites a method of inhibiting protein secretion in a cell comprising contacting the cell with the copending compound in amount effective to inhibit secretion wherein the protein is PD-1.
Regarding instant claims 188-189, copending claims 49-50 disclose methods of treating inflammation and cancer by administering the copending compounds.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 47 and 178 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLI A CHICKS whose telephone number is (571)270-0582. The examiner can normally be reached M-Th 7 a.m.- 5 p.m..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H Alstrum-Acevedo can be reached at (571)272-5548. The fax phone number for s 47 and 178 the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.C./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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