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 .
Response to Arguments
Applicant’s arguments, see Pages 1-2, filed 03/24/2026, with respect to the rejection(s) of claims 1-7, 20, 24-25 and 31-33 under Wrona et al. (WO 2019209962 A1) and the Double Patenting Rejection of claims 1-29 and 31-39 over U.S. Patent No. 12325702 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Alfaro et al. (US Patent No. 20190367497).
Alfano teaches compounds as inhibitors for activating Transcription Factor 6 (ATF6), that are used as therapeutic agents for the treatment of diseases or disorders mediated by ATF6 comprising the compounds of claimed invention.
Applicant has canceled claims 3-7, 20-21, 24 and added claim 49. No new matter was added. Claims 1-2, 8-19, 22-23, 25-39 and 49 are pending. Claims 1-2, 8-19, 22-23, 25-39 and 49 are now evaluated on its merits.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 8-19, 22-23, 25-39 and 49 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Alfaro et al. (US Patent No. 20190367497), published 12/05/2019, with a U.S priority date of 04/06/2018.
The applied reference has a common joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claims 1-2, 8-19, 22-23, 25-39 and 49, Alfaro teaches a method of treating a disease or disorder mediated by activating transcription factor 6 (ATF6α) in an individual in need thereof, comprising administering to the individual a therapeutically effective amount of a composition of Formula (I)
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121
240
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, or a pharmaceutically acceptable salt thereof and an acceptable carrier (relevant to claim 25) (para. 0022). Of the diseases or disorders Alfaro teaches a viral infection, hereditary cerebellar atrophy and ataxia, or Alzheimer's disease, type 2 diabetes mellitus, diabetic nephropathy, myocardial atrophy, heart failure, atherosclerosis, ischemia, ischemic heart disease, or cerebral ischemia (relevant to claims 26-31, 34-37) (para. 0012). In some embodiments Formula (I) is provided as a method of treating a disease or disorder associated with angiogenesis (relevant to claim 32) (para. 0018), a metabolic disorder (relevant to claim 33) (para. 0465) and inhibiting ATF6 in an individual (relevant to claims 38-39) (para. 0020).
Of the above Formula (I), Alfaro teaches A as
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58
94
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,
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68
92
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,
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56
94
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wherein Ra and Rb is 2-furyl (para. 0058), pyrimidinyl, pyrazinyl and pyridyl (para. 0134) and compounds
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159
304
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,
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135
324
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,
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146
321
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,
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187
305
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,
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135
290
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,
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126
286
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(relevant to claims 2, 8-18, 22 and 49) (Table 1). Alfaro additionally teaches R1 and R3 can be taken together to form a 6 membered ring (relevant to claims 19 and 23) (para. 0049).
Conclusion
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.
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MIKHAIL O'DONNEL. ROBINSON
Examiner
Art Unit 1627
/MIKHAIL O'DONNEL ROBINSON/ Examiner, Art Unit 1627
/SARAH PIHONAK/ Primary Examiner, Art Unit 1627
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