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 .
Priority
This application is a national stage entry of PCT/JP2020/010375 filed on 03/10/2020. Acknowledgment is made of applicant's claim for foreign priority based on applications filed in JAPAN (2019-068706) on 03/11/2019 and 11/15/2019 (2019-219142). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-12) drawn to a compound represented by general formula (1) or a pharmacologically acceptable salt thereof and compound no. 1 (1- (2-chloro-6-methylphenyl)-4-oxo-7-(4-pyridyl)-naphthyridine) as a species of a compound represented by general formula (1) in the reply filed on August 29, 2025 is acknowledged.
Claims 3-5, 7 and 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species or group, there being no allowable generic or linking claim.
Claims 1, 2, 6 and 8-12 are currently being examined as they read on the elected species.
Drawings Objection
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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.
Claims 1, 2, 6 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Furuta et al. JP-08151368 (Provided on IDS 09/01/2021) (Original Foreign Copy and Machine English Translation provided).
Claims 1, 2, 6 and 8-12 of the instant application claim a compound represented by general formula (1) or a pharmacologically acceptable salt thereof such as compound no. 1 (1- (2-chloro-6-methylphenyl)-4-oxo-7-(4-pyridyl)-naphthyridine) having the following structure:
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Furuta et al. teaches
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wherein R1 represents an optionally substituted alkenyl, cycloalkyl, aryl or heterocyclic group; R2 represents an optionally substituted aryl or heterocyclic group; X represents a hydrogen atom or a halogen atom; and A represents N or CH or a salt thereof, or an antiviral agent comprising the same (abstract and claims 1-12). Furuta et al. teaches that these naphthyridone or quinolone compounds of the invention or their salts have excellent antiviral activity (abstract).
Furuta et al. teaches among the compounds of the invention, preferred are naphthyridones or quinolones wherein R1 is an optionally substituted lower alkenyl, cycloalkyl, aryl or heterocyclyl, or salts thereof, and more preferred are naphthyridones or quinolones wherein R1 is an optionally substituted cycloalkyl, aryl or heterocyclyl, or R2 is an optionally substituted heterocyclyl, or salts thereof [0012].
Furuta et al. teaches examples of the substituents of the optionally substituted lower alkenyl, alkenyl, cycloalkyl, aryl or heterocyclyl in R1 include halogen atoms, and lower alkyl groups [0006]. Furuta et al. teaches that the halogen atom means a fluorine atom, a chlorine atom, a bromine atom or an iodine atom; and lower alkyl groups are preferably C1-5 alkyl groups such as methyl, ethyl, n-propyl, isopropyl, n-butyl, isobutyl, sec-butyl, tert-butyl and pentyl [0005]. Furuta et al. specifically teaches examples wherein R1 is substituted phenyl and R2 is pyridine [0013].
The prior art does not appear to provide sufficient specificity, i.e., involves too much "picking and choosing" to give rise to anticipation. See Coming Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989). That being said, it must be remembered that "[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect ....the combination is obvious". KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). Consistent with this reasoning, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have selected the various combinations of features claimed from within the prior art disclosure specifically, a compound of Furuta et al. having the following structure
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wherein R1 represents an optionally substituted aryl group such as phenyl, wherein the substituents are a lower alkyl such as methyl and a halogen such as Cl; R2 represents an optionally substituted heterocyclic group such as pyridine; X represents a hydrogen atom; and A represents N to arrive at the instantly claimed subject matter.
Thus the cited claims of the instant application are rendered obvious in view of the cited prior art teachings.
Claims 1, 2, 6 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. WO 2019/042470 A1 (Published March 7, 2019).
Claims 1, 2, 6 and 8-12 of the instant application claim a compound represented by general formula (1) or a pharmacologically acceptable salt thereof such as compound no. 1 (1- (2-chloro-6-methylphenyl)-4-oxo-7-(4-pyridyl)-naphthyridine) having the following structure:
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Li et al. teaches compounds or Formula (I) having the following structure:
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(page 2 of WIPO publication). Li et al. teaches Y may be selcted as N wherein R3 is absent; X may be selected as C=O; R1 may be selected as hydrogen; R2 may be selected as
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; R4 may be selected as optionally substituted C6-C10 aryl; and R5, R6 and R7 may be selected as hydrogen [0009]-[0023].
Li et al. teaches that optionally substituted means substituents that replace other groups include halogen atoms, and C1-C6 alkyl groups [0116]. Li et al. teaches that the halogen refers to fluorine, chlorine, bromine and iodine [0113]; and examples of alkyl groups are methyl, ethyl, n-propyl, isopropyl, n-butyl, isobutyl [0109].
The prior art does not appear to provide sufficient specificity, i.e., involves too much "picking and choosing" to give rise to anticipation. See Coming Glass Works v. Sumitomo Elec., 868 F.2d 1251, 1262 (Fed. Circ. 1989). That being said, it must be remembered that "[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect ....the combination is obvious". KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). Consistent with this reasoning, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have selected the various combinations of features claimed from within the prior art disclosure specifically, a compound of Li et al. having the following structure
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wherein Y represents N and R3 is absent; R1, R5, R6 and R7 represent hydrogen; R4 represents an optionally substituted aryl group such as phenyl wherein the substituents are a lower alkyl such as methyl and a halogen such as Cl; R2 represents pyridine; and X represents C=O to arrive at the instantly claimed subject matter.
Thus the cited claims of the instant application are rendered obvious in view of the cited prior art teachings.
Conclusion
Claims 3-5, 7 and 13-16 are withdrawn. Claims 1, 2, 6 and 8-12 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARA R. MCMILLIAN whose telephone number is (571)270-5236. The examiner can normally be reached Tuesday-Friday 12:00 PM-6:00 PM.
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/KARA R. MCMILLIAN/Primary Examiner, Art Unit 1623
KRM