Detailed Action
The present office action is in response to the amendments filed 15 Jul 2025.
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 .
Status
Claims 82, 88-91, 95, and 103-104 of the pending application have been examined on the merits. Claims 83-87, 93, 94, 96-102, and 105-106 of the pending application are withdrawn (see “Response to Applicant Election” below). Acknowledgement is made of the amendments filed 15 Jul 2025. Acknowledgement is made of the cancelation of claims 1-81 and 92.
Priority
Applicants identify the instant application, Serial #: 17/690,855 filed 09 Mar 2022, as a Continuation of U.S. Application #: 16/610/168, filed 01 Nov 2019, which is a National Stage Entry of International Patent Application #: PCT/AU2018/050404, filed 03 May 2018, which claims foreign priority from Foreign Application #s: AU2017901611, filed 03 May 2017, and AU2017901647, filed 05 May 2017.
Response to Applicant Elections
In the amendments filed 15 Jul 2025, applicant amended claims and limited the scope to compounds of formula (I) that did not include Compound 81, found in Fig. 8, the compound species elected in the reply filed 01 Apr 2025. Because the instantly elected compound is no longer within the scope of the instant claims, examiner extended the Markush search to applicant’s preferred Compound 81 (below) found on pg. 90 of the specification which reads on claims 82, 88-91, 95, and 103-104. This search retrieved prior art.
PNG
media_image1.png
600
800
media_image1.png
Greyscale
Claim 94 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim.
Claims 83-87, 93, 96-102, and 105-106 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Examiner notes that should claim 106 be rejoined, it will be subject to a rejection under 35 U.S.C. § 112(a) over the written description requirement for introducing new matter in the form of a chemical structure that was not found in the claims, specification, or drawings at the effective filing date. Claim 106 would also be rejected under 35 U.S.C. § 112(b) for a lack of antecedent basis as R3 cannot be H according to claim 82.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Response to Applicant Amendments
Acknowledgement is made of the amendments filed 15 Jul 2025.
The drawings were received on 15 Jul 2025. These drawings are acceptable and the objection to Fig. 8 is rendered moot.
The rejection of claims 82-84, 88-90, 95, 101, and 105-106 under 35 U.S.C. § 102(a)(1) are rendered moot following applicant amendments.
The terminal disclaimer filed on 15 Jul 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application # 17/291,694 has been reviewed and is accepted. The terminal disclaimer has been recorded. The double-patenting rejection has been rendered moot.
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.
Claim(s) 83-87, 93, 94, 96-102, 105, and 106 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 1999/032121 (provided in IDS 06/06/22), hereinafter ‘121, further in view of Ritchie et al. (Eur J Med Chem, 2016, 124:1057-1068), hereinafter Ritchie, and Wager et al. (J Med Chem, 2011, 54:7602-7620), hereinafter Wager.
The instant application claims compounds of formula (I):
PNG
media_image2.png
226
329
media_image2.png
Greyscale
Examiner extended the Markush search to include compound 81, found on pg. 90 of the specification, as the instantly elected invention:
PNG
media_image1.png
600
800
media_image1.png
Greyscale
Compound 81 is a compound of Formula (I) when R1 is C4cycloalkyl; R2 is H; R3 is F; and R4 is C0alkylC6cycloalkyl.
'121 teaches compounds of Formula (I) which inhibit the CSBP/p38 kinase (pg. 40, line 24 to pg. 41, line 11; and pg. 6, lines 7-8):
PNG
media_image3.png
104
116
media_image3.png
Greyscale
These compounds includes reference Example 2 (pg. 44, line 23-pg. 45, line 22):
PNG
media_image4.png
314
419
media_image4.png
Greyscale
Example 2 is a species of reference Formula (I) when R1 is pyrimidine substituted with -NHRa; Ra is aryl; R2 is cyclohexyl; and R4 is phenyl optionally substituted with halogen. ‘121 teaches that Example 2 inhibits CSBP/p38 kinase with an IC50 of <50 µM. However, Example 2 differs from the instantly elected species in having a phenyl group in place of the cyclobutyl group.
Ritchie teaches that rings such as cycloalkanes, including cyclobutane (pg. 1059, Fig. 1; pg. 1065, Fig. 5; and pg. 1066, Fig. 5), thiophenes, furans, and pyrroles are popular mono-substituted benzene replacements and while they may contribute to modulating binding interactions with target proteins, in reality they should be considered more as isosteres of mono-substituted benzene because of the little difference they make to ADME profiles (pg. 1066, column 2).
Wager teaches the discovery of selective histamine H3 receptor antagonists and the development of the strategy used to identify safe and druglike molecules at the design stage (pg. 7603, column 1). Wager teaches that cyclobutyl acts as an aryl ring isostere which would be less likely to bind in the minor groove of DNA based on its three-dimensional shape (pg. 7603, column 2 to pg. 7604, column 1).
Based on the teachings of ‘121, Ritchie, and Wager a person of ordinary skill in the art would have taken the compound of Example 2, taught in ‘121, and made an isosteric swap of the phenyl for a suitable isostere, such as cyclobutyl, as taught by Ritchie and Wager. The artisan would have had a reasonable expectation of success that phenyl for cyclobutyl would have retained the activity of reference Example 2 from ‘121 while arriving at the instantly elected compound. The artisan would be motivated to perform this swap to create a compound less likely to bind in the minor groove of DNA based on the three-dimensional shape of cyclobutane.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the foregoing discussion, the examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103. From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claim is allowed. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan D. Mahlum whose telephone number is (703)756-4691. The examiner can normally be reached 8:30 AM - 5:00 PM ET, M-F.
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, Andrew Kosar can be reached on (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.D.M./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
Prosecution Insights