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 .
Status of the Claims
Claims 1, 4, 6, 8, 10, 15-17, 21, 23 and 26-35 are pending in the instant application and subject to examination herein.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10 and 26-29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Invention in General
Applicant has disclosed an invention in the field of compounds binding to cereblon, an E3 ubiquitin ligase active in the cellular ubiquitin-proteasome pathway (UPP) of protein degradation.
The Claimed Invention
Claim 10 is drawn to a compound or pharmaceutically acceptable salt thereof, selected form a set of formulae, including Formula VII, a genus of compounds based on glutarimide (piperidine-2,6-dione) substituted at the glutarimide 3-position with a 1-oxo-2,3-dihydro-1H-isoindoline ring that is further substituted at its 4-7 positions (benzo ring), as shown in the image below:
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266
406
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.
Importantly, claim 10 requires that for Formula VII at least two of R18-R21 must be substituted with -N(R5)-X-R6 substituents, with R5, X and R6 further defined for Formula VII in the claim. Claims 27-29 are drawn to methods of treatment of disease or modulating cereblon or cereblon-associated cellular processes that comprise administering a pharmaceutical composition comprising a compound of claim 10 and a pharmaceutically acceptable carrier.
The Supporting Disclosure
The instant Specification does not disclose a single compound that meets the limitations of Formula VII as claimed in instant claim 10. The instant specification does disclose multiple compounds having the same glutarimide/isoindoline scaffold as instant Formula VII and bearing a single substituent corresponding to the required formula -N(R5)-X-R6, for example Applicant’s compound C95330 (paragraph [0468]); however, no compounds bearing a second substituent corresponding to the required formula -N(R5)-X-R6 are disclosed, nor is any synthetic strategy for the synthesis of such compounds proposed, nor any reason why such compounds should be expected to serve in the methods claimed in claims 27-29.
The State of the Art
The level of skill and knowledge in the art: Cereblon-binding molecules, including those based on lenalidomide, the core scaffold of instant Formula VI, are well known in the art. Asatsuma-Okumura provides a review of the molecular mechanisms of cereblon-based drugs, including lenalidomide and its derivatives CC-885, iberdromide, and similar drugs based on thalidomide and pomalidomide (Asatsuma-Okumura, et al.; Pharmacology & Therapeutics, v202, pp.132-139; 2019):
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646
1108
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(Figure 1, page 133 of Asatsuma-Okumura).
Asatsuma-Okumura notes that lenalidomide, which bears one amino group on the same core scaffold as instant Formula VII and is shown in the figure above, was approved by the FDA in 2006 (page 133). Thus, this mono-amino precursor was each known in the art for at least a decade prior to the filing date of the instant application; nevertheless, a review of the field of art finds no valid prior art exhibiting, proposing, or predicting a cereblon-binding molecule based on the core scaffold of instant Formula VII and having at least two amino groups bound to the benzo ring of the isoindoline moiety of the scaffold.
The predictability of the art: Wang (Wang, Z., “Targeted Protein Degaradation Therapy: Molecular Glues Based on the Cereblon,” PhD Thesis: University of Groningen, The Netherlands, 2022) provides a review of “molecular glues”, which are cereblon-binding molecules (pages 21-54). Wang teaches that lenalidomide, pomalidomide and thalidomide are molecular glues that bind cereblon (page 24) and differentiates between cereblon-binding “molecular glues”, such as lenalidomide, and PROTAC molecules that promote targeted protein degradation by promoting association between cereblon and targeted proteins in the following criteria (Table 1, page 22):
“molecular glues” bind only one protein (i.e., cereblon), have no linker, have poor amenability to rational design, low molecular weight, good cellular permeability, follow Lipinski rules and have good blood-brain barrier penetration;
PROTACs bind two proteins, have a linker, are amenable to rational design, have high molecular weight, poor cellular permeability and blood-brain barrier penetration, and do not follow Lipinski rules.
Crucially, Wang notes in the comparison above that cereblon-binding small molecules are poorly amenable to rational design. Wang also teaches that “the development of [molecular glues] is full of serendipity covered with mystery and strong uncertainty” (page 22).
Claim 10 is indefinite because Applicant does not disclose any compounds that meet the limitations of instant formula VII, does not explain why such compounds are readily available by synthetic means and because the field of art does not provide any example of a compound that meets the limitations of Formula VII or otherwise propose or predict such a compound. Claims 26-29 are indefinite because they depend from and include all the limitations of claim 10 and do not resolve the indefiniteness of claim 10. Claims 27-29 are further indefinite because the instant disclosure does not disclose any rationale for why such compounds that have never before been prepared by Applicant or elsewhere should function as bioactive agents in the methods of treatment and cereblon/proteasome modulation claimed in claims 27-29, and because the field of art indicates that the design of small molecule cereblon-binding compounds is poorly predictable.
Claim Rejections - 35 USC § 102 – Withdrawn
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.
(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.
The prior rejection of claims 1, 4, 6 and 8 under 35 U.S.C. 102(a)(1) as being anticipated by Jin (CN 107739389 A)1 is withdrawn in response to Applicant’s amendment of claims 1, 4, 6 and 8.
The prior rejection of claims 1, 2, 4, 6 and 8 under 35 U.S.C. 102(a)(1) as being anticipated by Ruchelman (Ruchelman, et al.; Bioorganic & Medicinal Chemistry Letters, v23, pp.360-365; 2013)2 is withdrawn in response to Applicant’s amendment of claims 1, 4, 6 and 8 and cancellation of claim 2.
The prior rejection of claims 1, 4, 6, 8, 16-17, 21 and 23 under 35 U.S.C. 102(a)(2) as being anticipated by Gray (U.S. Patent No. 11,530,219 B2) is withdrawn in response to Applicant’s amendment of claims 1, 4, 6 and 8.
The prior rejection of claim 10 under 35 U.S.C. 102(a)(2) as being anticipated by Phillips_2020 (US PGPub 2020/0140456 A1) is withdrawn in response to Applicant’s amendment of claim 10.
The prior rejection of claims 10 and 26-29 under 35 U.S.C. 102(a)(2) as being anticipated by Wang (WO 2021/041664 A1) is withdrawn in response to Applicant’s amendment of claim 10.
Claim Rejections - 35 USC § 103 – Withdrawn
The prior rejection of claims 1-2 under 35 U.S.C. 103 as being unpatentable over the disclosure of Jin (CN 107739389 A)3 is withdrawn in response to Applicant’s amendment of claim 1 and cancellation of claim 2.
Claim Rejections - 35 USC § 102 – Necessitated by Amendments and/or New Claims
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.
(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.
Claim 1 is anticipated by Crew.
Claims 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Crew (U.S. Patent No. 10,584,101 B2)4.
Claim 1 is drawn to a compound or pharmaceutically acceptable salt thereof, selected form a set of formulae, including formula II, representing a genus of (1-oxo-2,3-dihydro-isoindolinyl)-piperazine-2,6-diones that are substituted at the 5-position of the isoindolinone ring, as shown in the table below. Crew discloses a hydrochloride salt of a compound5 that anticipates the limitations of formula II of claim 1, as shown in the table below (Col. 256, lines 30-42):
Claim Number(s) of Instant Application
Instant Application
Crew
1
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212
414
media_image3.png
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wherein:
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144
302
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Thus, claim 1 is anticipated by the disclosure of Crew.
Claims 1, 15-17 and 21 are anticipated by Chan.
Claims 1, 15-17 and 21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chan (US 2020/0369679 A1)6.
Claim 1 is drawn to a compound or pharmaceutically acceptable salt thereof, selected form a set of formulae, including formula IV, representing a genus of (1-oxo-2,3-dihydro-isoindolinyl)-piperazine-2,6-diones that are substituted at the 7-position of the isoindolinone ring, as shown in the table below. Chan discloses a compound7 that meets the limitations of Formula IV, as shown in the table below (paragraph [1301]):
Claim Number(s) of Instant Application
Instant Application
Chan
1
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218
358
media_image5.png
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wherein:
• R4 is cyano
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144
264
media_image6.png
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Thus, claim 1 is anticipated by the disclosure of Chan.
Claim 15 is drawn to a Markush group of specific compounds, including the compound “2-(2,6-dioxo-3-piperidyl)-3-oxo-isoindoline-4-carbonitrile”, disclosed by Chan and shown in the table above. Claim 33 further limits claim 15 to a narrower group of specific compounds that also includes “2-(2,6-dioxo-3-piperidyl)-3-oxo-isoindoline-4-carbonitrile”.
Claim 16 is drawn to a pharmaceutical composition comprising a pharmaceutically effective amount of the compound of claim 1 and a pharmaceutically acceptable carrier. Chan discloses a pharmaceutical composition comprising a compound disclosed therein and a pharmaceutically acceptable excipient (paragraph [0123]).
Claim 17 further limits claim 16 to a method of treating a cancer comprising administering the composition of claim 16 to a subject in need thereof, wherein the cancer to be treated is selected from a Markush group that includes breast cancer.
Claim 21 further limits claim 16 to a method of treating an autoimmune disease or disorder, comprising administering the composition of claim 16 to a subject in need thereof, wherein the autoimmune disease or disorder is selected from a Markush group that includes Crohn’s disease.
Chan discloses a method of treating, ameliorating, or preventing a disease, disorder, or condition associated with G1 to S phase transition protein (GSPT1) in a subject, comprising administering to the subject a therapeutically effective amount of a compound provided therein, or pharmaceutical composition comprising a compound disclosed therein, and further discloses that the disease, disorder or condition to be treated can be any of a Markush group of diseases/disorders/conditions that includes Crohn’s disease and breast cancer (paragraph [1238]).
Thus, claims 15-17, 21 and 33 are anticipated by the disclosure of Chan.
Claims 1, 4, 15 and 30 are anticipated by Liu.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Liu (WO 2020/038415 A1)8,9.
The limitations of claim 1 are discussed in the rejections above and hereby incorporated into the instant rejection.
Claim 4 further limits claim 1 to the following:
The compound is a compound of Formula II
R2 is -N(R5)-CH2)m-X-(CH2)n-R6;
R5 is H
R6 is selected from a Markush group that includes (C3-C10)heterocyclo.
Liu discloses multiple compounds that anticipate the limitations of claim 4, for examples the compounds shown in the table below (Example 240, page 185, lines 1-9; and Example 257, page 206, lines 1-5):
Claim Number(s) of Instant Application
Instant Application
Liu
1
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212
414
media_image3.png
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wherein:
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104
190
media_image7.png
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2-(2,6-dioxopiperidin-3-yl)-l-oxoisoindolin-5-yl)glycine (i.e., 2-[[2-(2,6-dioxo-3-piperidyl)-1-oxo-isoindolin-5-yl]amino]acetic acid)
1
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212
414
media_image3.png
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wherein:
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274
390
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3-[1-oxo-5-(azetidin-3-ylamino)-2,3-dihydro-1H-isoindol-2-yl]piperidine-2,6-dione
Thus, claims 1 and 4 are anticipated by the disclosure of Liu.
Claim 15 claims a Markush group of specific compounds, including the compound “2-[[2-(2,6-dioxo-3-piperidyl)-1-oxo-isoindolin-5-yl]amino]acetic acid”, disclosed by Liu and shown in the table above. Claim 30 further limits claim 15 to a narrower Markush group of specific compounds that also includes the compound “2-[[2-(2,6-dioxo-3-piperidyl)-1-oxo-isoindolin-5-yl]amino]acetic acid”.
Thus, claims 15 and 30 are anticipated by the disclosure of Liu.
Claims 1 and 6 are anticipated by Tweedie.
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tweedie (Tweedie, D., et al.; Journal of Neuroscience Methods, v183, pp182-187; 2009)10.
Claim 1 is drawn to a compound or pharmaceutically acceptable salt thereof, selected form a set of formulae, including formula III, representing a genus of (1-oxo-2,3-dihydro-isoindolinyl)-piperazine-2,6-diones that are substituted at the 6-position of the isoindolinone ring, as shown in the table below. Tweedie teaches a study in the development of a cellular assay used to develop tumor necrosis alpha (TNF-a) lowering agents, and Tweedie teaches a compound, called “A9”,11 that anticipates the limitations of Formula III of claim 1, as shown in the table below (page 184, Figure 2):
Claim Number(s) of Instant Application
Instant Application
Tweedie
1
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212
414
media_image9.png
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wherein:
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96
228
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Thus, claim 1 is anticipated by the teaching of Tweedie.
Claim 6 further limits formula (III) of claim 1 to a narrower genus that is also met by compound A9 of Tweedie.
Thus, claim 6 is anticipated by the teaching of Tweedie.
Claims 1, 8, 16-17 and 23 are anticipated by Duplessis.
Claims 1, 8, 16-17 and 23 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Duplessis (WO 2021/083949 A1)12.
The limitations of claim 1 are discussed in the rejections above and hereby incorporated into the instant rejection.
Duplessis discloses bifunctional compounds that cause the degradation of a subunit protein of the Switch/Sucrose Non Fermentable (SWI/SNF) complex, namely SWI/SNF-Related Actin-Dependent Regulator of Chromatin, Subfamily A, Member 2 (SMARCA2). As part of the invention, Duplessis discloses a compound, designated as “Example 111”13, that anticipates the limitations of instant Formula IV of claim 1, as shown in the table below (page 224, lines 11-15):
Claim Number(s) of Instant Application
Instant Application
Duplessis
1
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218
358
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wherein:
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148
342
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Thus, claim 1 is anticipated by the disclosure of Duplessis.
Claim 8 further limits Formula IV of claim 1 to a narrower genus that is met by Duplessis’ “Example 111”.
Claim 16 further limits claim 1 to a composition comprising a pharmaceutically effective amount of the compound of claim 1 and a pharmaceutically acceptable carrier. Duplessis further discloses that the invention disclosed therein includes pharmaceutical compositions comprising a compound disclosed therein or a pharmaceutically acceptable salt thereof, and therapeutically inert carrier (page 3, lines 17-19).
Claim 17 further limits claim 16 to a method of treating a cancer comprising administering the composition of claim 16 to a subject in need thereof, wherein the cancer to be treated is selected from a Markush group that includes breast cancer. Duplessis discloses a method of treating SMARCA2-mediated disorders in a subject, comprising administering a compound disclosed therein or a pharmaceutically acceptable salt thereof, to the subject (page 42, lines 16-19) and further discloses that SMARCA2-mediated disorders include cancers, including breast cancers (pages 42-43, bridging paragraph).
Claim 23 further limits claim 16 to a Markush group of methods that includes a method of modulating proteasomal degradation of a protein, comprising administering the composition of claim 16 to a subject in need thereof. Duplessis discloses that the compounds disclosed therein cause the degradation of SMARCA2 protein via the targeted ubiquination of SMARCA2 protein and subsequent proteasomal degradation.
Thus, claims 8, 16-17 and 23 are anticipated by the disclosure of Duplessis.
Claim 10 is anticipated by CAS 16477-31-9.
Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS 16477-31-9 (Chemical Abstracts Services, registry number 16477-31-9, originally entered on 11/16/1984).
Claim 10 is drawn to a compound or pharmaceutically acceptable salt thereof, selected form a set of formulae, including Formula VIII that regards a genus of compounds based on glutarimide (2,6-piperidinedione) substituted at the glutarimidyl 3-position with 3-oxo-1,2-benzisothiazole-S,S-dioxide that may be optionally further substituted at the 4-7 positions of the benzisothiazole ring, as shown in the table below. CAS 16477-31-9 discloses a compound14 that is the simplest iteration of the genus of instant Formula VIII, while meeting the limitations of the genus, as shown in the table below:
Claim Number(s) of Instant Application
Instant Application
CAS 16477-31-9
10
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270
420
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wherein:
• R8-R11 are all hydrogen
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200
400
media_image13.png
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Thus, claim 10 is anticipated by CAS 16477-31-9.
Claims 10, 15, 26-29 and 33 are anticipated by Phillips_2017.
Claims 10, 15, 26-29 and 33 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Phillips_2017 (WO 2017/197051 A1)15.
Claim 10 is drawn to a compound or pharmaceutically acceptable salt thereof, selected form a set of formulae, including Formula X that regards a genus of 3-substituted glutarimides (2,6-piperidine-diones). Phillips_2017 discloses an invention of amine-linked C3-glutarimide degronimers and degrons for therapeutic applications (Abstract), including various compound that anticipate the instant Formula X, for example Phillips’ compounds 216 and 17417, as shown in the table below (page 251, lines 5-11):
Claim Number(s) of Instant Application
Instant Application
Phillips_2017
10
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216
212
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wherein:
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110
184
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10
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216
212
media_image14.png
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wherein:
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152
176
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Thus, claim 10 is anticipated by the disclosure of Phillips_2017.
Claim 15 is drawn to a Markush group of specific compounds that includes the compound “3-(2-oxopyrrolidin-1-yl)piperidine-2,6-dione”. Claim 33 further limits claim 15 to a narrower group of specific compounds that also includes “3-(2-oxopyrrolidin-1-yl)piperidine-2,6-dione”. Phillips_2017 discloses this compound as “compound 174”, as shown in the table above.
Claim 26 further limits claim 10 to a composition comprising a pharmaceutically effective amount of a compound of claim 10 and a pharmaceutically acceptable carrier. Phillips_2017 provides pharmaceutical compositions comprising an effective amount of compound or pharmaceutically acceptable salt together with at least one pharmaceutically acceptable carrier for any of the uses described therein (page 230, lines 14-23).
Claim 27 further limits claim 10 to a method of treating a cancer comprising administering the composition of claim 26 to a subject in need thereof, wherein the cancer is selected from a Markush group that includes breast cancer.
Claim 28 further limits claim 10 to a method of treating an autoimmune disease comprising administering the composition of claim 26 to a subject in need thereof, wherein the autoimmune disease is selected from a Markush group that includes multiple sclerosis.
Phillips_2017 discloses methods of treatment of diseases, including that the compounds of Phillips’ Formula I can be used to treat diseases or disorders, by administering the compound in an effective amount to a host, including a human (page 204, lines 17-25). Phillips_2017 further discloses that compounds of Phillips_2017’s Formula I can be used to treat a Markush group of diseases including multiple sclerosis (pages 204-205, bridging paragraph), and further discloses that compounds of the invention disclosed therein can be used to treat cancer, including breast cancer (page 211, lines 9-31). Phillips_2017’s compound 2 meets the limitations of Phillips_2017’s compound Formula I (page 86, lines 14-18 and page 89, top left exemplary compound).
Claim 29 further limits claim 26 to a Markush group of methods that includes a method of modulating cereblon, comprising administering the composition of claim 26 to a subject in need thereof. Phillips_2017 discloses that the compounds disclosed therein can be used alone as an in vivo binder of cereblon which can be administered to a host, for example, a human, in need thereof, in an effective amount, optionally as a pharmaceutically acceptable salt, and optionally in a pharmaceutically acceptable composition, for any therapeutic indication which can be treated by modulating the function and or activity of the cereblon-containing E3 Ubiquitin Ligase Protein Complex (pages 15-16, bridging paragraph).
Thus, claims 15, 26-29 and 33 are anticipated by the disclosure of Phillips_2017.
Claims 10, 15, 26-27, 29 and 35 are anticipated by Hwang.
Claims 10, 15, 26-27, 29 and 35 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hwang (US PG Pub 2022/0105188 A1).
The limitations of claims 10, 15, 26-27 and 29 are discussed in the rejections above and hereby incorporated into the instant rejection.
Claim 10 is drawn to a compound or pharmaceutically acceptable salt thereof, selected form a set of formulae, including Formula IX that regards a genus of compounds based on glutarimide (piperidine-2,6-dione) substituted at the glutarimide 3-position with a 4-oxo-3,4-dihydro-1,2,3-benzotriazine ring that may be optionally further substituted at its 5-8 positions (benzo ring), as shown in the table below. Hwang discloses multiple compounds that meet the limitations of Formula IX of instant claim 10, for example Hwang’s “Example 67”18 shown in the table below (paragraph [1080]):
Claim Number(s) of Instant Application
Instant Application
Hwang
10
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248
418
media_image17.png
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wherein:
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248
544
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Thus, claim 10 is anticipated by the disclosure of Hwang.
Claim 15 is drawn to a Markush group of specific compounds including “3-(8-amino-4-oxo-1,2,3-benzotriazin-3-yl)piperidine-2,6-dione”. Claim 35 further limits claim 15 to a narrower group of specific compounds that still includes “3-(8-amino-4-oxo-1,2,3-benzotriazin-3-yl)piperidine-2,6-dione”. Hwang discloses this compound by name (paragraph [0126]).
Regarding claim 26, Hwang discloses a pharmaceutical composition comprising a compound of the invention disclosed therein in combination with a pharmaceutically acceptable carrier, excipient or diluent and optionally other biologically active agents (paragraph [0510]).
Regarding claim 27, Hwang discloses that the invention disclosed therein comprises administering to a patient or subject at least one effective amount of a compound as described hereinabove, optionally in combination with an additional biologically active agent, thereby degrading a bromo domain-containing protein or polypeptide capable of controlling a disease state or condition, which treats the disease state or condition. The method according to the invention can be used to treat various disease states or symptoms, including cancer, by administration of at least one effective amount of a compound described therein (paragraph [0511]).
Claim 29 further limits claim 26 to a Markush group of methods including a method of modulating proteasomal degradation of a protein. Hwang discloses that the invention therein is “Degraducer compound that induces degradation of a target protein, i.e., EED or PRC2, utilizing cereblon E3 ubiquitin ligase” (Abstract), and that compounds disclosed therein have an aspect of remarkably achieving target proteolysis-inducing activity through UPS (Ubiquitin Proteasome System) (paragraph [0041]).
Thus, claims 15, 26-27, 29 and 35 are anticipated by the disclosure of Hwang.
Claims 15 and 33 are anticipated by Phillips_2020.
Claims 15 and 33 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Phillips_2020 (US PGPub 2020/0140456 A1)
Claim 15 is drawn to a Markush group of specific compounds that includes the following compounds:
3-(quinoxalin-2-ylamino)piperidine-2,6-dione;
3-(quinazolin-2-ylamino)piperidine-2,6-dione.
Claim 33 further limits claim 15 to a narrower group of specific compounds that still includes both of the compounds listed above. Both of these compounds are disclosed by Phillips among a non-limiting set of examples of compounds available via Phillips_2020’s synthetic scheme 37 (paragraph [0949], pages 196-197):
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114
198
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(3-(quinoxalin-2-ylamino)piperidine-2,6-dione, paragraph [0949], page 196, bottom right)
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104
199
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(3-(quinazolin-2-ylamino)piperidine-2,6-dione, paragraph [0949], page 197, top left)
The compound “3-(quinazolin-2-ylamino)piperidine-2,6-dione” is further disclosed by Phillips_2020 as “Compound 120” (page 187, paragraph [0916]):
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128
412
media_image21.png
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.
Thus, claims 15 and 33 are anticipated by the disclosure of Phillips_2020.
Claims 15 and 33 are anticipated by CAS 1495439-14-9.
Claims 15 and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS 1495439-14-9 (Chemical Abstracts Services, registry number CAS 1495439-14-9, originally entered on 12/15/2013 by Aurora Fine Chemicals).
The limitations of claims 15 and 33 are discussed in the rejections above and hereby incorporated into the instant rejection.
CAS 1495469-14-9 discloses the compound “3-(2-pyrimidinylamino)-2,6-piperidinedione”, which is claimed in claims 15 and 33:
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98
178
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Thus, claims 15 and 33 are anticipated by the disclosure of CAS 1495439-14-9.
Claims 15 and 33 are anticipated by CAS 1910778-49-2.
Claims 15 and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS 1910778-49-2 (Chemical Abstracts Services, registry number 1910778-49-2, originally entered on 05/15/2016 by Aurora Fine Chemicals).
The limitations of claims 15 and 33 are discussed in the rejections above and hereby incorporated into the instant rejection.
CAS 1910778-49-2 discloses the compound “N-(2,6-dioxo-3-piperidinyl)-1,6-dihydro-6-oxo-2-pyridinecarboxamide”, which is claimed in claims 15 and 33:
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96
200
media_image23.png
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Thus, claims 15 and 33 are anticipated by the disclosure of CAS 1910778-49-2.
Claims 15 and 35 are anticipated by CAS 2250288-86-7.
Claims 15 and 35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS 2250288-86-7 (Chemical Abstracts Services, registry number 2250288-86-7, originally entered on 11/30/2018).
The limitations of claims 15 and 35 are discussed in the rejections above and hereby incorporated into the instant rejection.
CAS 2250288-86-7 discloses the compound “3-(4-oxo-1,2.3-benzotriazin-3(4H)-yl)-2,6-piperidinedione”, which is claimed in claims 15 and 35:
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114
208
media_image24.png
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Thus, claims 15 and 35 are anticipated by the disclosure of CAS 2250288-86-7.
Allowable Subject Matter
Claims 32 and 34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/W.J.Y./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
1 Cited in Applicant’s Information Disclosure Statement (IDS) dated 06/16/2022.
2 Cited in Applicant’s Information Disclosure Statement (IDS) dated 04/22/2024.
3 Cited in Applicant’s Information Disclosure Statement (IDS) dated 06/16/2022.
4 Filing date: 10/11/2017
5 3-[1-oxo-5-(piperazin-1-yl)-2,3-dihydro-1H-isoindol-2-yl]piperidine-2,6-dione hydrochloride
6 Effective filing date: 05/24/2019.
7 2-(2,6-dioxopiperidin-3-yl)-3-oxoisoindoline-4-carbonitrile, also nameable as 3-[1-oxo-7-cyano-2,3-dihydro-1H-isoindol-2-yl]piperidine-2,6-dione
8 Filing date: 09/21/2019
9 Cited in Applicant’s Information Disclosure Statement dated 03/07/2025.
10 Cited in Applicant’s Information Disclosure Statement dated 05/30/2024.
11 3-[1-oxo-6-(isopropylamino)-2,3-dihydro-1H-isoindol-2-yl]piperidine-2,6-dione
12 Effective filing date: 10/29/2019
13 3-[7-[[1-[9-[4-[4-[3-[3-amino-6-(2-hydroxyphenyl)pyridazin-4-yl]oxy-1-piperidyl]phenyl]piperazin-1-yl]-9-oxo-nonyl]triazol-4-yl]methylamino]-1-oxoisoindolin-2-yl]piperidine-2,6-dione
14 3-(1,1-Dioxido-3-oxo-1,2-benzisothiazole-2(3H)-yl)-2,6-piperidinedione
15 Cited in Applicant’s Information Disclosure Statement dated 10/18/2023.
16 N-(2,6-dioxopiperidin-3-yl)benzamide
17 3-(2-oxopyrrolidin-1-yl)piperidine-2,6-dione
18 3-(6-((2-(4-((4-(4-((3S,4R)-4-(dimethylamino)-l-(2-fluoro-6-methylbenzyl)pyrrolidin-3-yl)phenyl)piperazin-l-yl)methyl)piperidin-1-yl)-2-oxoethyl)amino)-4-oxobenzo[d][1,2,3]triazin-3(4H)-yl)piperidin-2,6-dione