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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/30/2026 has been entered.
Current Status of 17/764,193
This Office Action is responsive to the amended claims of 11/30/2025.
Claims 1, 12, and 21 are examined on the merits. Claims 13-16, 22-26, 32-39 are withdrawn.
Priority
This Application is a national stage entry of PCT/US20/56515, filed 10/20/2020, which claims priority to U.S. Provisional Application 62/927,354, filed 10/29/2019.
The instant claims find support from the provisional application. Therefore, the effective filing date is 10/29/2019.
Response to Arguments
Applicants’ claim amendments and Remarks of 11/30/2025 are acknowledged and have been considered.
Any rejection and/or objection not specifically addressed or modified below is herein withdrawn.
In regard to the 103 rejection, this rejection is maintained. Applicants remarks with Examiner’s reply is summarized below:
Applicants submit that the combination of GUNTHER, THRONBER, and GERSTER does not teach element (a) of claim 1, and show how they do not teach element (a) of claim 1.
Examiner acknowledged the deficiency of the references GUNTHER, GERSTER, and SHI do not teach the specific compound of claim 1 but similar compounds which could be modified (page 4 and 5 of the final rejection). THORNBER teaches a reason to modify GUNTHER’s, GERSTER’s or SHI’s compounds.
Applicants submit that bioisosterism replacement of O or NH in resiquimod or garidiquimod disclosed by GUNTHER with classical isostere CH2 disclosed by THORNBET would not give rise to the claimed inventions because it would produce a 2-butyl 1H imidazo[4,5-c]quinoline-4-amine.
Examiner agrees on this point but GUNTHER is used as an example that there is prior art with this core and variable alkyl chains.
Applicants submit that one of ordinary skill in the art would not have been motivated to modify the -CH2- in the R2 functional group… compound 2 (Point III on page 5 of Remarks).
Examiner disagrees. Modifying compounds based on bioisosterism is known and commonly done to keep biological activity while changing other chemical properties (such as solubility or toxicity). THORNBER’s publication date will not impact patentability. THORNBER is relied on to teach that bio-isoesteric replacements are known. Parameters (a)-(h) are things to consider and the best compound will mimic the most important parameter. One skilled in the art will still have the motivation to try (i.e. try to modify compounds with bioisosterism) and nonpreferred and alternative embodiments still constitute prior art (see MPEP 2123(II)).
Applicants also submit that there would be no reasonable expectations of success (pages 6-8 of Remarks), because the compounds would not be reasonably predictable (page 9-11).
Examiner has reviewed these points and has found them to be not persuasive. The comparison of SHI’s compound in Table 1 still has less potent TL-7/TLR-8 activity. Nonpreferred and alternative embodiments still constitute prior art (see MPEP 2113(II)).
Applicants submit that there is an advantage of being suitable for drug development page 11).
Examiner has reviewed these points and has found them to be not persuasive.
At a high level, GUNTHER teaches a compound that is almost identical compound with the same properties as the instant compound; therefore there would be motivation to try and modify the compound by bioisosterism. The compounds would be expected to have similar priorities.
According to MPEP 2144.09(I), 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 priorities”. In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).” See also MPEP 2114.08.
NOTE: Regarding Shi, Shi teaches a chemical compound, as a pharmaceutical, that differs from that of the instantly claimed chemical compound by only a methylene group in an alkyl chain. Shi teaches its compounds as having the same properties as the instantly claimed compounds. Applicant is respectfully reminded that 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.
Response to Amendment
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 12, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over GUNTHER (US 9186373 B2), in view of THORNBER (C. W. Thornber, “Isosterism and Molecular Modification in Drug Design”, Imperial Chemical Industries Limited, Published January 1979), GERSTER (US 5266575), and SHI (Shi et. Al., ACS Med. Chem. Lett, 2012), previously cited.
GUNTHER teaches a pharmaceutical composition of a Cbl-b inhibitor with a TLR7/8 agonist of either resiquimod
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or gardiquimod
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(column 5). GUNTHER teaches that the pharmaceutical composition further comprises a pharmaceutically acceptable carrier (column 7).
THORNBER teaches that NH and O and CH2 are bioisosteric replacements (page 564 table 1 Ring equivalents).
An artisan would expect a replaced NH/O with CH2 to function the same way, particularly since the compounds containing NH and O are taught in the same reference for the same purpose (TLR7/8 agonist).
Furthermore, GERSTER teaches the ethyl version of the compound
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(example 6 on page 9) and teaches pharmaceutical compositions comprising a pharmaceutically acceptable carrier (page 4).
Additionally, SHI teaches the pentyl version of the compound
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(abstract and page 502 paragraph 3).
With the amount of art that has the core, and the variable alkyl chain, an artisan would have found it obvious to vary the alkyl chain. Even if the compound has modifications of the alk-OH group, those compounds in series show the alkyl chain is varied and they function the same, so varying it on the OH version would be expected to function the same.
Additionally, the compound would not have to be recognized to be a TLR7/8 agonist. “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. MPEP 2112 (I) and (II).
This teaches claims 1, 12, and 21.
Conclusion
Claims 1, 12, and 21 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GILLIAN A HUTTER whose telephone number is (571)272-6323. The examiner can normally be reached M-F 7:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/G.A.H./ Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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