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
This action is responsive to the amended claims of 05/22/2023. Claims 1-19 and 21 are pending. Claims 3-7, 11-16, 18-19, and 21 are withdrawn.
Claims 1-2, 8-10, and 17 have been examined on the merits.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-17) and the species of Formula (I) compound 5, below, in the reply filed on 07/09/2025 is acknowledged.
Compound 5:
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.
A search for the elected species compound 5 did not retrieve any prior art (see SEARCH 6 of the attached search notes). Thus, the Markush search has been extended to the following species:
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The extended species reads on claims 1-2, 8-10, and 17.
Claims 3-7 and 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species of Formula (I), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/09/2025.
Claims 18-19 and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/09/2025.
Priority
The effective filing date is 03/19/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/26/2022 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. Examiner understands “cycloalkyl” and “heterocycloalkyl” to include saturated and partially unsaturated rings (see specification at Pg. 12 P30). Further, both rings are understood to include both mono-, bi-, tri-, etc. cyclic rings as long as the claimed number of carbons/members of the ring system are not exceeded especially since the specification recites the cycloalkyl can be isolated or fused (Pg. 12 P28) and the heterocycloalkyl can be isolated of fused (Pg. 12 P30).
Claim Rejections - 35 USC § 112(b)
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.
Claims 8-10 are 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 8 recites “wherein R5 and R4 together with the nitrogen atom to which they are attached.” This limitation lacks antecedent basis in the claim. In Formula (I), as defined in parent claim 1, R5 and R4 do not attach to a nitrogen atom, but instead attach to adjacent carbon atoms. Thus, it is unclear what nitrogen atom the cited limitation is referring to. Therefore, the metes and bounds of the claims are undefined rendering the claim indefinite.
Claims 9-10 depend from claim 8 and are similarly rejected since they do not rectify the underlying issue.
To overcome: please amend claim 8 to read “wherein R5 and R4 together with the carbon atoms to which they are attached”.
Claim Rejections - 35 USC § 112(d)
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.
Claims 8-10 are 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 8 recites “wherein R5 and R4 together with the nitrogen atom to which they are attached.” In Formula (I), as defined in parent claim 1, R5 and R4 do not attach to a nitrogen atom, but instead attach to adjacent carbon atoms. The claim 8 appears to be drawn to a compound outside of the scope of parent claim 1 and, thus, does not properly further limit 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.
Claims 9-10 depend from claim 8 and are similarly rejected since they do not rectify the underlying issue.
To overcome: please amend claim 8 to read “wherein R5 and R4 together with the carbon atoms to which they are attached”.
Claim Rejections - 35 USC § 102
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 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, 8-10, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by YANG (CN 106491594 A, pub. 03/15/2017).
Note: a machine translation of YANG is provided attached to the end of the original Chinese document and is cited below for references to the text of the document.
Regarding claims 1-2 and 8-10, YANG teaches a compound and salt thereof of formula (I-III) and its use in the preparation of drugs for treating pulmonary fibrosis (Pg. 9 claim 1) wherein the compound is:
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(Pg. 2 claim 1). The compound (I-III) reads on instant Formula (I) wherein R1 and R2 are C1 alkyl, R3 and R6 are H, R4 and R5 together form a C10 cycloalkyl substituted with 2 R7 wherein R7 is C1 alkyl and wherein the C10 cycloalkyl is fused to a 3-membered heterocycloalkyl having 1 O ring heteroatom. Note, based on the claim interpretation above, a bicycloalkyl ring falls within the scope of the instant R4 and R5.
Regarding claim 17, YANG teaches a pharmaceutical composition comprising the compound (I-III) or salt thereof and at least one pharmaceutical excipient (Pg. 10 claim 3), i.e., a pharmaceutically acceptable excipient.
Thus, YANG anticipates claims 1-2, 8-10, and 17.
Claims 1-2, 8-9, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by YANG (CN 106491594 A, pub. 03/15/2017).
Note: YANG is applied again since it teaches another species of the instant compound and is included here in the interest of compact prosecution. This is not indicative that the full scope of the claims has been searched.
Regarding claims 1-2 and 8-9, YANG teaches a compound and salt thereof of formula (I-II) and its use in the preparation of drugs for treating pulmonary fibrosis (Pg. 9 claim 1) wherein the compound is
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(Pg. 2 claim 1). The compound (I-II) reads on instant Formula (I) wherein R1 and R2 are C1 alkyl, R3 and R6 are H, R4 and R5 together form a C10 cycloalkyl substituted with 2 R7 wherein R7 is C1 alkyl. Note, based on the claim interpretation above, a partially unsaturated ring falls within the scope of the instant R4 and R5.
Regarding claim 17, YANG teaches a pharmaceutical composition comprising the compound (I-II) or salt thereof and at least one pharmaceutical excipient (Pg. 10 claim 3), i.e., a pharmaceutically acceptable excipient.
Thus, YANG anticipates claims 1-2, 8-9, and 17.
Claims 1-2 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ACS (American Chemical Society (ACS), Chemical Abstracts Service, Registry Number 2394948-88-8, entered in STN on 20 Dec. 2019).
Note: this reference was found incidental to the search for the extended Markush species and is included here in the interest of compact prosecution. This is not indicative that the full scope of the claims has been searched.
ACS teaches:
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wherein R1 and R2 are C2 alkyl, R3 and R6 are H, R4 and R5 together form a C6 cycloalkyl substituted with 1 R7 wherein R7 is C1 alkyl.
Thus, ACS anticipates claims 1-2 and 8.
Claims 1-2 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ACS (American Chemical Society (ACS), Chemical Abstracts Service, Registry Numbers 3727-54-6 and 55643-46-4, entered in STN on 16 Nov. 1984, pages 1-2).
Note: this reference was found incidental to the search for the extended Markush species and is included here in the interest of compact prosecution. This is not indicative that the full scope of the claims has been searched.
ACS teaches:
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(Pg. 1) wherein R1 and R2 are C2 alkyl, R3 and R6 are H, R4 and R5 together form an unsubstituted C6 cycloalkyl; and
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(Pg. 2) wherein R1 and R2 are C1 alkyl, R3 and R6 are H, R4 and R5 together form an unsubstituted C6 cycloalkyl.
Thus, ACS anticipates claims 1-2 and 8.
Conclusion
Claims 1-2, 8-10, and 17 are rejected.
To expedite allowance, Applicant is respectfully made aware of issues pertaining to withdrawn claims:
Claims 14-15 and 16 recite compounds 5-10, 19AP1, and 19AP2 which contain R8 and R3-R4 moieties that are not within the scope of Formula (I), exemplified by:
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. Here, R3 and R4 together form a 5 membered heterocycloalkyl ring having 1 ring N heteroatom which is substituted by an oxo and is further fused to a C6 aryl and R8 is oxo. Formula (I) does not allow for R8 to be oxo and does not recite the heterocycloalkyl ring formed by R3-R4 can be substituted by anything other than a fused C6-10 aryl. This issue will become a 112b/d rejection when the withdrawn claims are rejoined.
Claim 5 is indefinite regarding “the heterocycloalkyl ring.” Since multiple heterocycloalkyl rings are recited in parent claim 1, it is unclear which of these rings claim 5 is trying to further limit. Please recite the R group(s) from which the ring derives.
Note, a search for the structures
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and
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, wherein *N can be a ring or chain node, did not retrieve any prior art (see SEARCH 6 of the attached search notes).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA ELIZABETH BELL whose telephone number is (703)756-5372. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/S.E.B./
Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625