DETAILED ACTION
This office action is in response to the Applicant’s filing dated February 18th, 2026.
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 371 of PCT/CA2020/051228 filed on September 11th, 2020; and a PRO of 62/900,210 filed on September 13th, 2019.
Status of Claims
Claims 1, 12 and 15-18 are pending in the instant application. Acknowledgement is made of Applicant’s remarks and amendments filed on February 18th, 2026. Claims 15-18 remain withdrawn as they do not read on the elected invention.
Objections and/or Rejections and Response to Arguments
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated (Maintained Objections and/or Rejections) or newly applied (New Objections and/or Rejections, Necessitated by Amendment or New Objections and/or Rejections, NOT Necessitated by Amendment). They constitute the complete set presently being applied to the instant application.
Maintained Objections and/or Rejections
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 1 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Oonuki et al (US 2007/0276041 A1), cited in a previous Office Action; in view of Richardson et al (US 2015/0328198 A1), cited in a previous Office Action.
Regarding claim 1, Oonuki teaches Example 37 (page 7, Table 1; page 8, Table 2):
PNG
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452
754
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Wherein as Oonuki defines in Tables 1 and 2, R5 is n and R, and n is 10 and R is CH3 thus forming an 11 carbon alkyl chain; R1, R3 and R4 are H; R2 is p-methoxyphenylmethyl; and X is O (page 7, Table 1; page 8, Table 2). Oonuki teaches Example 37 is a PPAR-γ agonist (Page 8, Table 2).
The instantly claimed compound of Formula 2 in claim 1 is a homolog of Oonuki’s compound, Example 37. When the instantly claimed compound, exhibiting a 15 carbon alkyl chain, is compared to Example 37 of Oonuki, and its 11 carbon alkyl chain, the only difference between the compounds is the 4 additional -CH2- repeating units in the alkyl chain in the instantly claimed compound.
MPEP 2144.09 states:
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) 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).
Oonuki does not teach Example 37 has antibacterial activity.
Richardson teaches that PPAR-γ agonists are useful in the treatment of Staphylococcus aureus infections (page 1, paragraph [0006]; page 2, paragraph [0019]), including in methicillin resistant strains; furthermore disclosing that PPAR-γ agonist administration in vivo to mice significantly reduced bacterial burden at days 7 and 12 of MRSA infection, and shortened the average healing time by 5 days (pages 6-7, paragraphs [0070-0072], Example 3).
It would have been prima facie obvious to a person of ordinary skill in the art to add -CH2- repeating units to Example 37 of Oonuki, with the reasonable expectation that the modified compound would possess similar properties, and the PPAR-γ agonist function of the compound would be retained. One would be motivated to do so in light of the teachings of Richardson, that PPAR-γ agonists are useful in the treatment of Staphylococcus aureus infections. It is well established in the art that modifying alkyl chain length represents a routine optimization strategy. Such modifications are among the most common medicinal chemistry approaches, and homologous compounds are expected to preserve function absent evidence to the contrary.
Regarding claim 12, Oonuki teaches that Example 37 can be prepared in dosage forms comprising pharmaceutically acceptable carriers. Examples of pharmaceutically acceptable carriers include lactose, glucose, HPMC, HPC, PVP, ethanol, magnesium stearate, surfactants, citric acid and distilled water (page 5, paragraph [0036]).
Taken together, all of this would result in the compound and composition of instant claims 1 and 12 with a reasonable expectation of success.
Response to Arguments
Applicant argues:
Applicant contends that a person of ordinary skill in the art would expect the addition of four repeating CH2 units extending the alkyl chain to alter the biological activity, lipophilicity, and/or membrane permeability of the compound.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
Compounds differing by successive CH2 units are homologs that are generally expected to possess similar properties due to their close structural similarity. Thus, one of ordinary skill in the art would not expect that extension of the alkyl chain by four repeating CH2 units would impart unexpected or unpredictable biological activity, lipophilicity, membrane permeability or other functional properties to the claimed compound. Moreover, applicant has not provided comparative experimental data establishing that the claimed chain length exhibits criticality relative to closely related homologous compounds.
MPEP 2144.09(II) states:
“Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) 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). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).”
Applicant argues:
Applicant contends Table 2 of the specification shows that PPAR-γ activity is a function of the chain length, demonstrating a non-linear and inherently unpredictable relationship between chain length and activity.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
Table 2 (pages 40-41) of the instant specification merely provides structural characterization of Compound 1, with NMR data; and does not disclose any biological activity or functional relationship between PPAR-γ activity and alkyl chain length.
Applicant argues:
Applicant contends that the introduction of four repeating CH2 units would introduce structural hinderance and rigidity, thus impacting the compound’s molecular conformation.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
The applicant has not provided sufficient evidence demonstrating that the introduction of four repeating CH2 units would impart structural hinderance or rigidity, particularly as the four repeating CH2 units are connected via carbon-carbon single bonds. Furthermore, no carbon-carbon double or triple bonds, which one of ordinary skill in the art would generally associate with conformational rigidity, are introduced in this alkyl chain extension.
Conclusion
Claims 1 and 12 are rejected.
No claim is allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/C.L.J./Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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