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 .
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.
Election/Restrictions
Examiner have withdrawn 112 and 102 rejection on record.
This office action is a Non-final due to examiner error for applying non complaint species to the claim.
Applicant provided complaint species election of
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Examiner did not find prior art on applicant elected species.
Therefore, Markush search was extended to the species
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, where in ring A is aromatic ring,
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substituted with R1 and R2, wherein R1 is H(n is 4) and R2 is OH(m is 1); Ring B is C3 non-aromatic heterocyclic ring
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, substituted with R3 wherein R3 is
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(unsubstituted aryl); R5 H; R6 and R7 are independently H; Q1 is NH; Q2 is C(R) wherein R is H; G=X is C=O; X6, X7, X8, X14 and X14 are C. This search retrieved prior art.
Therefore, the Markush search will not be extended unnecessarily to additional species in this Office Action following Markush search practices.
The Markush search extended species reads on Claims 54-55, 58-60 and 64-74.
Claims 56-57, 61-63 and 75 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on6/11/2025.
Claims 54-55, 58-60 and 64-74 are examined in this office action
Current Status of 17/790,961
This office action is in response to the amended claims on 08/27/2025.
Claims 54-55, 58-60 and 64-74 are examined in this office action.
Priority
The effective filing date is 01/30/2020 since the instant claims find support in provision applicant no 62/967,645.
Response to Arguments
Examiner acknowledges the receipt of applicant’s claim amendment and remarks of August 27th 2025.Examiner have reviewed these remarks and amendments.
Regarding 112 amended claim 54 and 60 by defining G=X as C=O, C=S, S=O, or SO2 thus overcoming 112 rejections. Therefore 112 rejection is withdrawn.
Regarding 102 rejection,
Applicant argues:
the compound
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wherein R5 is defined as NHR where are is a cycloalkyl is not defined by the claim thus is not claimed.
Examiner’s response:
Examiner agrees with applicant’s traversal, therefore 102 rejection is withdrawn.
New Rejections
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 54-55, 58-59, and 60 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ando et.al. (US 2004/0204409).
Ando et.al. discloses the compound
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( N-(2-amino-4-cyanophenyl)-2-phenylacetamide) (page 23, example 1B paragraph [0363]) where in ring A is aromatic ring,
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substituted with R1 and R2, wherein R1 is H(n is 4) and R2 is OH(m is 1); Ring B is C3 non-aromatic heterocyclic ring
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, substituted with R3 wherein R3 is
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(unsubstituted aryl); R5 H; R6 and R7 are independently H; Q1 is NH; Q2 is C(R) wherein R is H; and G=X is C=O thus anticipating claims 54-55 and 60.
The limitation “the compound is a collagen translation inhibitor” is interpreted as an inherent property/function. Per MPEP 2112.01(I) and (II): “if the structure recited in the prior art is substantially identical to that of the instant claims, then properties/function of the instantly claimed compound are deemed inherent and anticipated by the prior art reference”. Thus, the ANDO prior art reference anticipates instant claim 58.
Also, the ANDO Abstract and paragraph [0032] teaches pharmaceutical compositions of the compounds with pharmaceutically acceptable carriers, therefore anticipating instant claim 59.
Conclusion
Claims 54-55 and 58-60 are rejected.
Claims 64-74 are objected to for depending on rejected claim 54.
Examiner found more structure corresponding to formula (I) of claims 54 and 60 where claims 58-59 and 64-74 can be rejected in future Final office action.
Please note compound
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is an intermediate in the prior art. Therefore claim 59 was not rejected because
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is not in a pharmaceutical composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rehana Ismail whose telephone number is (703)756-4776. The examiner can normally be reached Monday-Friday 9:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew D Kosar can be reached at (571)272-913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.I./Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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