DETAILED ACTION
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 .
Current Status of 17/773,404
This Office action is responsive to the amended claims and Applicant remarks of 11/21/2025. Applicants identify claims 1-11, 13, 14, 16-20, 22-37, and 40-71 as pending. Claims 12, 15, 21, and 38-39 are cancelled and claims 54-71 are withdrawn. Claims 1-11, 13, 14, 16-20, 22-37, and 40-53 are pending and have been examined on the merits.
Priority
The instant application is a national stage entry of PCT/US2020/059226, international filing date 5 November 2020, which claims priority to U.S. Provisional Application No. 63/046,476, filed 30 June 2020, U.S. Provisional Application No. 62/931,627, filed 6 November 2019, and U.S. Provisional Application No. 62/931,174, 5 November 2019.
Base claim 1 is not fully supported by 62/931,174. The following elements of instant claim 1 are supported in 62/931,627 and are given the effective filing date of 6 November 2019: Z is -S(=O)2-; L1 is -CH2-; M1 is -OH; R200 is independently C3-6 cycloalkyl; 5-10 member heterocycloalkyl having 1-3 ring heteroatoms selected from N, O, and S; C1-6 alkyl and C3-6 cycloalkyl are optionally substituted with 4 substituents.
The following elements of base claim 1 do not find support in any of the provisional applications, but find support in PCT/US2020/059226 and are given the effective filing date of 5 November 2020: M1 is 4-10 member heterocycloalkyl having 1-3 ring heteroatoms independently selected from N, O, and S (only 5-10 member is claimed in 62/931,174); M2 is C5-10 spiroalkyl (62/931,174 only discloses C6-10 spiroalkyl); M2 is 4-10 member heterocycloalkyl having 1-3 ring heteroatoms independently selected from N, O and S (62/931,174 only discloses 5-10 membered substituents).
All other elements of base claim 1 and claims 2-11, 13, 14, 16-20, 22-37, and 40-53 find support in 62/931,627 and are given the effective filing date of 5 November 2019.
Response to Arguments/Amendments
Applicants have amended the specification, replacing the chemical structures of Tables 1-15 with clear legible structures. This renders the previous objection to the specification moot and the objection is withdrawn.
Applicants have amended claim 1 to include a wavy line perpendicular to the bond of attachment for the structure of Q. This renders the previous objection moot and the objection is withdrawn.
Applicants have amended claim 52 to replace the structures of the compounds with clear structures, however Applicants have omitted structures for E001-E003. Claim 52 remains objected to due to this issue. Applicants can overcome this by amending claim 52 to include the structures of E001-E003 found in the specification.
Regarding the 112(b) rejection of claim 52, Applicants have amended the claim to include clear, legible structures for the claimed compounds. This amendment renders the previous rejection moot and is withdrawn.
Regarding the 102(a)(1) rejections, Applicants have amended the allowed substitutions of the variables of the instantly claimed compound of Formula I. These amendments prevent from being
PNG
media_image1.png
166
209
media_image1.png
Greyscale
; Z from being S(O)2; L1 from being a bond; and M1 from being -OH, -NH2, halogen, alkyl, or -H. Each of the compounds used in the 102 rejections required at least one of these substitutions and the amendment excluding them renders the previous rejections moot. The rejections are withdrawn due to these amendments.
Regarding the 103 rejection of claims 1-9 and 11 over PubChem CID 86799023 in view of Silverman, the Applicants have amended claim 1 to exclude Z from being S(O)2. CID 86799023 requires this substitution of Z. The prior art references do not teach other substituents for Z. The previous rejection is withdrawn.
Claim Objections
Claim 52 is objected to because of the following informalities: Compounds E001-E003 have been omitted from the claim. This objection can be rendered moot by incorporating the structures of these compounds disclosed in the examples section of the specification. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 1 is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of the compounds of Formula I is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: G1-G5 are each independently N, C-H, or -C-L1-M1 provided that at least one of G1-G5 is N. With these limitations there are over 200 possible structural permutations of the heteroaryl ring structure of instant claim 1 before even considering the variations of the L1 and M1 groups. L1 is independently selected from eight different substituents and can also be taken together to form methylenedioxy and ethylenedioxy rings with adjacent carbon atoms in the ring. This further expands the structural permutations of the ring to include ring-fused heterocycles. Each M1 is independently selected from C6-10 aryl, 5-10 member heteroaryl with 1-3 heteroatoms in the ring, C3-6 cycloalkyl, and 4-10 member heterocycloalkyl having 1-3 heteroatoms in the ring. These groups can each be further substituted with 1-3 substituents disclosed in the claim. The combinatorial breadth of the substitutions discussed above do not share a single structural feature that constitutes a unifying structural similarity. Rather, the claim encompasses multiple structurally distinct heteroaryl frameworks. Accordingly, the claimed Markush group fails to satisfy the requirement of structural similarity necessary for a proper Markush grouping.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 52 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 has been amended so that Z cannot be -S(O)2-; L1 cannot be a bond; and M1 cannot be H. E286 of claim 52 contains an -S(O)2- group at Z. E054, E121, E153, E161, E242, and E287 each contain G substituents of -C-L1-M1 where either L1 is a direct bond or L1 is -CH2- and M1 is H. Neither of these are allowed with the additional limitations of amended claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites that M2 is C1-6 alkyl; C3-6 cycloalkyl; C5-10 spiroalkyl; 4-10 member heterocycloalkyl; and C6-10 aryl. However, the claim later recites a wherein clause that M2 is selected from C1-6 alkyl; C3-6 cycloalkyl; C5-10 spiroalkyl; 4-10 member heterocycloalkyl; C6-10 aryl; and 5-10 member heteroaryl. It is unclear whether D is intended to be within the scope of M2, as the recitations conflict. Accordingly, the scope of the claim is unclear and the claim is indefinite as written.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 7, 10, 16, 17, 19, 20, 22, 23, 40, and 42 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tipparaju (Tipparaju, Suresh K et al. “Design and synthesis of aryl ether inhibitors of the Bacillus anthracis enoyl-ACP reductase.” ChemMedChem vol. 3,8 (2008): 1250-68.doi:10.1002/cmdc.200800047).
Tipparaju discloses
PNG
media_image2.png
156
295
media_image2.png
Greyscale
(CAS RN 1071967-10-6) which reads on the compounds of instant claim 1 with the following substitutions: R1 is H; Z is -C(=O)-(CR20R21)n, n=0; A=-L2-M2, L2 is a bond, M2 is C1 alkyl; G1 is N; G2, 4, 5 are CH; G3 is -C-L1-M1, L1 is -O-, M1 is C6 aryl optionally substituted with a halogen and a C1 alkoxy group.
Claims 1, 2, 7, 10, 16, 17, 19, 20, 22, and 40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Whitten (US 10106529 B2).
Whitten discloses
PNG
media_image3.png
211
348
media_image3.png
Greyscale
(CAS RN 1415640-86-6) which reads on the compounds of instant claim 1 with the following substitutions: R1 is H; Z is -C(=O)-(CR20R21)n, n=0; A=-L2-M2, L2 is a bond, M2 is C6 aryl with 2 R200 groups, each R200 is halogen; G1 is N; G2, 4, 5 are CH; G3 is -C-L1-M1, L1 is -O-, M1 is C6 aryl optionally substituted with a halogen and a C1 haloalkyl group.
Claims 1, 2, 7, 10, 11, 16, 17, 19, 20, 26, 40, and 50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Houze (WO 2013086397).
Houze discloses
PNG
media_image4.png
230
318
media_image4.png
Greyscale
(CAS RN 1442670-99-6) which reads on the compounds of instant claim 1 with the following substitutions: R1 is H; Z is -C(=O)-(CR20R21)n, n=0; A=-L2-M2, L2 is a bond, M2 is -N(R81)(R82), R81 is H, R82 is C1 alkyl; G1 is N; G2, 4 are CH; G3, 5 are -C-L1-M1, for G3 L1 is -CH2-, M1 is 6 member heteroaryl optionally substituted with halogen, for G5 L1 is -O-, M1 is 6 member heteroaryl optionally substituted with a C2 alkyl.
Claims 1, 2, 3, 5, 7, 16, 18, 19, 20, 22, 40, and 42 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horie (HORIE, T et al. “Studies on pyridazine derivatives. I. Synthesis and antimicrobial activity of 6-substituted 3-aminopyridazine and its sulfonamido derivatives.” Chemical & pharmaceutical bulletin vol. 10 (1962): 580-91. doi:10.1248/cpb.10.580).
Horie discloses
PNG
media_image5.png
118
296
media_image5.png
Greyscale
(CAS RN 96712-98-0) which reads on the compounds of instant claim 1 with the following substitutions: R1 is H; Z is -C(=O)-(CR20R21)n, n=0; A=-L2-M2, L2 is a bond, M2 is C1 alkyl; G1, 2 are N; G 4, 5 are CH; G3 is -C-L1-M1, L1 is -O-(CH2)w-, w is 1, M1 is C6 aryl.
Conclusion
Claims 1, 2, 3, 5, 7, 10, 11, 16, 17, 19, 20, 22, 23, 26, 40, 42, 50 and 52 are rejected.
Claims 4, 6, 8-9, 13-14, 18, 24-25, 27-37, 41, 43-49, 51, and 53 are objected to for being dependent upon a rejected base claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CONNOR KENNEDY ENGLISH whose telephone number is (571)270-0813. The examiner can normally be reached Monday Friday, 8 a.m. 5 p.m. ET..
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 at (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.
/C.K.E./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625