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 Claims
Claims 1-16, 26-27, and 30-31 are pending.
Claims 27, 30, and 31 are withdrawn.
Claims 17-25, 28-29, and 32-43 are cancelled.
Priority
Applicant’s claim for benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. This application is a national stage entry of and claims priority to Application Serial No. PCT/IB2021/054229, filed 05/17/2021; and further claims priority to PRO Application number 63/026,301, filed on 5/18/2020.
Information Disclosure Statement
All references from IDS(s) received 10/19/2023 and 05/16/2025 have been considered unless marked with a strikethrough.
Response to Arguments
Applicant's arguments filed 4/20/2026 have been fully considered and have been found not persuasive.
In a non-final dated 10/31/2025, Claims 1-16 and 26 were examined upon their merits.
In a non-final dated 10/31/2025, Claims 1-16 and 26 were rejected under 35 U.S.C. 102 and 35 U.S.C. 103.
With respect to the 102 rejection, the Applicant argues that the primary reference provided by the Examiner (“Maloney”) fails to anticipate claim 1 because it neglects the limitation that "when R³ᵇ is fluoro, R³ᵃ is methoxy and R³ᵉ and R³ᵈ are each hydrogen, then at least one of X¹ and X² is fluoro or chloro". The Examiner argues that this is not how the claim is recited rather it reads as the following:
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The Examiner argues that the way the claim is currently worded it is unclear that the limitation “then at least one of X¹ and X² is fluoro or chloro” is relevant to all (i), (ii), and (iii). The Examiner understands now but requests the Applicant reword this limitation for clarity. Along this line, the Applicant argues that the Examiner solely relies on the Compounds 278 and 471 in Maloney, which fail to meet the instant limitations of either “at least one of X¹ and X² is fluoro or chloro” or “when R³ᵃ is CF₃, R³ᵇ is fluoro, and R³c and R³ᵈ are each hydrogen, then R¹⁰ is not cyclopropylmethyl,” respectively. The Examiner argues that she relies on the genus structure of Maloney (Claim 13, Formula Ia-4), where compounds 278 and 471 are just examples of this genus structure. The compounds chosen are just examples to show that the genus structure allows for the limitations of the instant claim because the embodiments can be switched out for the functional groups that meet the instant limitations. The Examiner believes if the wording of the claim was clearer then the 102 rejection may be reconsidered. Therefore, the Examiner withdraws Maloney as anticipatory art and the 102 rejection, however, the Examiner maintains that it would be obvious to a person skilled in the art to use embodiments from different structural examples taught by Maloney to arrive at the instant invention.
With respect to the 103 rejection, the Applicant argues that Maloney fails to teach the instant limitations of either “at least one of X¹ and X² is fluoro or chloro.” First, Examiner maintains argument from above about clarity of the claim limitations. Second, Examiner argues that even if this limitation was clearer it would be obvious to a person skilled in the art to use embodiments from different structural examples taught by Maloney to arrive at the instant invention. The Applicant also argues that it would not be obvious because the instant application has demonstrated substantially improved feature of the instantly claimed compounds, where the compounds had greater liver-targeted tissue distribution profiling than plasma distribution. Further, the Applicant argues that nowhere in Maloney recognizes or discloses such a feature, i.e. improve liver-targeting drug profiling. The Examiner argues that this point is moot because the claims do not reflect and limitation of the compounds for use in liver targeting. The claims only recite a compound, which is taught by Maloney. Therefore, the 103 rejection is maintained.
MAINTAINED REJECTIONS
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.
(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.
Claims 1-3, 6, 7-9, 11-15 and 26 are rejected under 35 U.S.C. 102(a)(1)/(2) as being anticipated by Maloney, J. et al. (US20180273488A1; “Maloney”).
This rejection applies to an expanded specie, where X1 and R3b-d are all hydrogen, or R3b = F (see examples below), X2 can be a hydrogen or fluoro group, R3a is an alkoxy group, and R10 is a cycloalkyl group.
Maloney teaches an overlapping genus structure with independent claim 1 and the expanded specie.
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(Maloney, Claim 13)
Maloney teaches two structural examples of the expanded specie, see below (Compound 278 and Compound 471). The structural examples include where R3b is fluoro and R3a is an alkoxy group, as required by instant claims 1-3, 6-9, 11-15. Maloney also teaches the compounds as a pharmaceutically acceptable salt (Claim 1), as required by instant claim 26.
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Therefore, the expanded specie and instant claims 1-3, 6, 7-9, 11-14 and 26 are anticipated by Maloney.
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 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 1-16 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Maloney, J. et al. (US20180273488A1; “Maloney”).
This rejection applies to the elected specie.
Maloney teaches an overlapping genus structure with independent claim 1 and the elected specie.
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(Maloney, Claim 13)
Although Maloney fails to teach an explicit structural example of the elected specie, Maloney teaches structural examples that encompass the defined embodiments of the elected specie. While Compound 471 taught by Maloney teaches all the embodiments of the elected specie, with an additional alkoxy group in the R3a, Maloney also teaches the compound without an additional aryl group, as shown in Compound 19 (Table 7).
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(Maloney, Compound 471)
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(Maloney, Compound 19)
It would be obvious to a person skilled in the art at the time to combine the different embodiments of the compounds taught by Maloney to arrive at the elected species and one would be motivated to do so because Maloney teaches the compounds as inhibitors as lactate dehydrogenase, similar to the instant application. Along the same line, structurally similar compounds are expected to have similar properties, see MPEP 2144.09.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham.
Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Applying KSR example rationale (B), it would have been prima facie obvious to extract the structure of compound 471 taught by Maloney and substitute the alkoxy on the aryl structure for a hydrogen group, as seen in compound 19 taught by Maloney. A person skilled in the art would be motivated to do so because Maloney teaches the compounds as inhibitors as lactate dehydrogenase, similar to the instant application. Along the same line, structurally similar compounds are expected to have similar properties, see MPEP 2144.09. Therefore, claims 1-16 and 26 would be obvious to a person skilled in the art at the time.
Conclusion
Claims 1-16 and 26 are rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLA MARIA BAUER whose telephone number is (703)756-1269. The examiner can normally be reached Monday-Friday 7:30-5 EST.
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, Clint Brooks can be reached at (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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/N.M.B./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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