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
Instant application 17/772,855 filed on 04/28/2022 claims benefit as follow:
CONTINUING DATA:
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Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/21/2026 has been entered.
Status of the Application
Claims 1-2 and 4-11 are pending. As indicated in the Office Action of 06/04/2025, claims 5-6 and 11 were withdrawn without traverse directed to a non-elected invention (claim 11) or a non-elected species (claims 5-6). Claims 1-2, 4, 7-10 are the subject matter of this Office Action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/21/2023, 11/23/2022 and 04/28/2022 were in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Arguments/Amendments
The amendment filled on 01/21/2026 has been entered.
Applicant amended claims 1, 6 and 9.
Applicant cancelled claim 3.
Applicant’s arguments, filed 01/21/2026, with respect to 103 rejection have been fully considered but they are not persuasive.
Applicant demonstrated superior JAK3 inhibitory effect of one specific compound of Example 1.
It should be noted that Example 1 of HA bear an acrylamide substituent (not an amino group (NH2) as drawn on page 10 of Applicant’s Remarks):
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For clarity, the correct structure of Example 1of HA is presented below:
Example 1 of HA
Instant Example 1
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It should be noted that comparison of Example 1 of HA with Example 1 of the present application shows around 19-fold increase in JAK3 potency for the instant compound of Example 1. Such an increase is unexpected and would not have been predicted by a person of ordinary skill in the art.
In view of the unexpected result for the compound of instant Example 1, an independent claim directed to the specific compound, instant Example 1, would be free from prior art.
Regarding additional compounds recited in the instant claims, Applicant's arguments filed 01/21/2026 have been fully considered but they are not persuasive.
Applicants submitted that:
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Applicant's argument has been fully considered but is not persuasive because the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." (See MPEP 716.02(b)).
In the instant case Applicant did not establish statistical significance. As presented in instant Table 1, most of the instant compounds show JAK3 IC50 activity in the same range as compounds of HA (JAK3 IC50 ≤ 100 nM).
Applicant submitted that “Examples 2-4 of Ha likely do not exhibit as low JAK3 IC50”, however Applicant did not provide statistical data.
Further, Applicant's argument that the effects of the structural difference can also be confirmed from other examples of the present application has been fully considered but is not persuasive. Applicant submitted:
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Examiner agrees that Example 3 of HA could be compared to instant compound 16, Example 4 of HA could be compared to instant compound 17, and Example 5 of HA could be compared to instant compound 1 as presented by Applicants:
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However, HA disclosed JAK3 IC50 ≤ 100 nM for compounds of Example 3, 4 and 5. The range “IC50 ≤ 100 nM” encompasses any value less and equal to 100 nM. Given the broadest reasonable interpretation of the phrase “IC50 ≤ 100 nM” in light of a lack of definition in the specification of HA, an IC50 value of 1 nM or 2 nM reads on this interpretation. Thus, the instant compounds show JAK3 IC50 in the same range as compounds of HA (JAK3 IC50 ≤ 100 nM) as the difference between 1 nM and 0.7 nM is neither statistically significant nor practically significant. Applicant is encouraged to provide explicit comparative data for those compounds, and determine distinct JAK3 IC50 values for comparative examples 3-5 to demonstrate that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.
In addition, the discussed results (see Applicant’s remarks, page 10) are not commensurate in scope with the pending claims.
MPEP 716.02(d) states: “Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.”
In the instant case, it should be noted that all compounds presented on page 10 of Applicant’s Remarks fall under the instant Formula 1
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wherein R1 is phenyl, R3 is hydrogen, R2 is a distinct C2 alkenyl of acrylamide.
However, the instant claim 1 recite additional substituents may be selected for R1, R2 and R3; for example, claim 1 recites R2 is C1-5 alkyl, R1 is “benzothiazolyl, phenyl, pyrazolyl, pyridinyl, or quinolinyl […] unsubstituted or substituted with […]”
As presented in Table 1 (instant specification page 31), there are no compounds listed wherein R2 is a C1-C5 alkyl. All the compounds listed comprise the distinct C2 alkenyl of an acrylamide moiety. In addition, not all recited compounds show JAK3 IC50 lower than 9 nM of the prior art compound of HA. For example, instant compound 22 show JAK3 IC50 > 400 nM.
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It should be noted that instant claim 1 recite that benzothiazolyl substituted with halogen may be selected as R1. As presented in Table 1 of instant specification, substitution of phenyl with substituted benzothiazolyl leads to worse JAK3 IC50 activity:
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Since compound 22 show JAK3 IC50 > 400 nM, thus, the compound does not show improved properties vs compounds disclosed by HA. Therefore, unexpected results do not occur over the entire claimed range.
It is examiner’s position that it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare positional isomers of compounds disclosed by HA. A skilled artisan would expect retention of activity and would have been motivated to use the compounds for the same purpose.
MPEP 2144.09 (II) states that “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.”
As the record currently stands, Applicant has shown an unexpected result for a single compound (Example 1). In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness. See MPEP 716.01.
Therefore, the 103 rejection is maintained. The 103 rejection does not apply to instant Example 1. However, it should be noted that the 103 rejection still applies to the elected species, instant Example 4 (Example 4 was elected in the reply filed on 05/19/2025).
Applicant is encouraged to show additional data/comparative examples where the nitrogen position in the ring leads to improved results over its counterparts. In addition, Applicant is encouraged to limit instant claims to compounds for which unexpected/improved properties can be confirmed.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-2, 4 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over HA (WO2013118986A1, also published as KR 2013-0091464).
HA teaches and claims:
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HA teaches:
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Regarding instant claim 10, HA teaches and claims:
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Further, regarding the elected species, HA teaches and claims compound of formula (I) wherein W is (see page 8):
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Furthermore, HA teaches example 3 (page 22):
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The example 3 disclosed by HA differs from the instant example 16:
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only in the position of the substituent corresponding to X-Y-Z variable in HA’s Formula (I).
MPEP 2144.09 (II) states that “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 addition, Table 5 of HA shows that the JAK3 inhibitory activity of Example 3 is in the same range as JAK3 activity of instant compounds: IC50 ≤ 100 nM (see page 27):
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As presented in Table 1 (instant specification page 31), for example, instant compound 5 show JAK3 IC50 of 35.8 nM and instant compound 26 show JAK3 IC50 > 80 nM.
JAK3 inhibitory activity of instant Example 16 is also in the same range as JAK3 activity of compounds of HA: IC50 ≤ 100 nM (see instant Table 1, page 32 instant Example 16: JAK3 IC50 = 0.7 nM).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare positional isomers of compounds disclosed by HA. A skilled artisan would expect retention of activity and would have been motivated to use the compounds for the same purpose.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IZABELA SCHMIDT whose telephone number is (703)756-4787. The examiner can normally be reached Monday - Friday from 9 am to 5 pm.
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, Clinton A Brooks can be reached on (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/I.S./Examiner, Art Unit 1621
/GEORGE W KOSTURKO/Primary Examiner, Art Unit 1621