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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2026 February 18 has been entered. Newly amended claims 1, 2, 7, 8, 16-18, 21, 23, 24, and 27-40 are pending in the examined case. Claims 1, 2, 7, 8, 16-18, 21, 23, 24, 27-32, and 36-40 are examined on the merits.
Claims 33-35 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 2024 December 26.
Claim Rejections - 35 USC § 112
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 1, 2, 7, 8, 16-18, 21, 23, 24, 27-32, and 36-40 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 1 recites a proviso in which a compound of claim 1 cannot be 4-(1-3-chloropyridin-4-yl)1H-pyrazol-4-yl)aniline. There is insufficient antecedent basis for this compound not being part of formula (II) in the claim because variable R1a cannot be a halo group.
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.
Claim(s) 1, 2, 7, 23, 27-29, 32, and 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ALMSTEAD (WO 2006044502, published 2006 April 27). Almstead describes compounds 101, 102, and 108 (pages 72-73). In these compounds, the following examined definitions apply: R1 is (m or p)-HO-C(O)-phenyl; R3 and R4 are each H; and R20 is p-(NO2 or NH2)-phenylene. Due to the claims not limiting the substituents of an alkyl group, a CO2H group is considered a substituted C1-alkyl group. These compounds are useful as suppressors of a nonsense mutation (page 23, lines 12-23). Pharmaceutical compositions are described (pages 151-159).
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Claim(s) 1, 2, 23, 27-29, and 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by AL-MATAR (Journal of Heterocyclic Chemistry, 2007, 44, 603-607). Al-Matar describes compounds 4c and 4h (page 604). In these compounds, the following examined definitions apply: R1 is p-Me-phenyl; R3 is C(O)-phenyl; R4 is H; and R20 is p-NO2-phenylene. Due to the claims not limiting the substituents of an alkyl group, a CO2H group is considered a substituted C1-alkyl group.
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Claim(s) 1, 2, 23, and 27-29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RIYADH (Molecules, 2011, 16, 1834-1853). Riyadh describes compounds 1b, 2b, 11b, 13b, and 14b (page 1835, scheme 1; page 1838, scheme 4). In these compounds, the following examined definitions apply: R1 is p-Me-phenyl; R3 is C(O)-[Me, CH=CH-N(Me)2, CH=CH-NH-triazole, C(CHO)=N-NH-triazole, or C(O)- [1,2,4]triazolo[3,4‐c][1,2,4]triazine]; R4 is H; and R20 is p-NO2-phenylene. Due to the claims not limiting the substituents of an alkyl group, a CO2H group is considered a substituted C1-alkyl group. Compound 2b has antimicrobial properties (page 1842, section 2.2 to page 1843, table 1; page 1849, section 3.11).
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Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claim(s) 1, 2, 7, 23, 27-29, 32, and 36 are rejected under 35 U.S.C. 103(a) as being unpatentable over ALMSTEAD (WO 2006044502, published 2006 April 27).
Determining the scope and contents of the prior art
Almstead describes compounds 101, 102, and 108 (pages 72-73). In these compounds, the following examined definitions apply: R1 is (m or p)-HO-C(O)-phenyl; R3 and R4 are each H; and R20 is p-(NO2 or NH2)-phenylene. Due to the claims not limiting the substituents of an alkyl group, a CO2H group is considered a substituted C1-alkyl group. A hydrogen or NMe2 substituent is equivalent to an NO2 or NH2 group as a substituent for a phenyl ring (page 24, line 24 to page 26, line 2; specifically page 24, lines 16-22 and page 25, line 15 to page 26, line 2). These compounds are useful as suppressors of a nonsense mutation (page 23, lines 12-23). Pharmaceutical compositions are described (pages 151-159)
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Ascertaining the differences between the prior art and the claims at issue
In the prior art, variable R2c is H or NMe2.
Resolving the level of ordinary skill in the pertinent art
Those of relative skill in the art are those with level of skill of the authors of the references cited to support the examiner’s position (MD’s, PhD’s, or those with advanced degrees and the requisite experience in preparation of compounds of the elected group).
Considering objective evidence present in the application indicating obviousness or nonobviousness
Almstead describes that H and NMe2 are alternative embodiments to a NO2 or NH2 group when attached to phenyl ring in compounds that suppress a disorder related to a nonsense mutation. Consequently there is a reasonable expectation of success to replace a nitro or amino group with an H or dimethylamino group at the para position of a phenyl ring.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 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. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Exemplary 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.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel.
Claim(s) 1, 2, 23, and 27-29 are rejected under 35 U.S.C. 103(a) as being unpatentable over RIYADH (Molecules, 2011, 16, 1834-1853).
Determining the scope and contents of the prior art
Riyadh describes compound 2a (page 1835, scheme 1). In these compounds, the following examined definitions apply: R1 is phenyl; R3 is C(O)-CH=CH-N(Me)2, CH=CH-NH-triazole; R4 is H; and R20 is p-NO2-phenylene. Due to the claims not limiting the substituents of an alkyl group, a CO2H group is considered a substituted C1-alkyl group. Compounds 2a and 2b have antimicrobial properties (page 1842, section 2.2 to page 1843, table 1; page 1849, section 3.11).
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Ascertaining the differences between the prior art and the claims at issue
In the prior art an unsubstituted phenyl ring is attached to the 1-position of a pyrazole ring.
Resolving the level of ordinary skill in the pertinent art
Those of relative skill in the art are those with level of skill of the authors of the references cited to support the examiner’s position (MD’s, PhD’s, or those with advanced degrees and the requisite experience in preparation of compounds of the elected group).
Considering objective evidence present in the application indicating obviousness or nonobviousness
Riyadh describes that when an unsubstituted phenyl ring or a p-Me-phenyl ring is attached to the 1-position of a pyrazole ring, both compounds have antimicrobial properties. Based on the combined teachings of both compounds being prepared and tested for antimicrobial properties, a reasonable expectation of success is present to replace a methyl group with an H.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 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. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.
Conclusion
Claims 1, 2, 7, 8, 16-18, 21, 23, 24, 27-32, and 36-40 are not allowed.
The following is a statement of reasons for the indication of allowable subject matter: A compound of formula (II) of claim 8 is free of the prior art of record because ALMSTEAD (WO 2006044502, published 2006 April 27) does not describe or render obviate a compound in which variables (R3, (R4) are (Me, Me), (H, Me), or (Me, H)..
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699