DETAILED ACTION
This office action is in response to the Applicant’s filing dated March 3rd, 2026.
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 1-21 are pending in the instant application. Acknowledgement is made of Applicant's remarks and amendments filed on September 27th, 2023. Acknowledgement is made of Applicant's amendment of claims 1-21; and cancelation of claims 22-38.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on March 3rd, 2026 is acknowledged.
Claims 4-17 and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 March 3rd, 2026.
Applicant’s election without traverse of CAS RN: 2714391-79-2 shown below in the reply filed on March 3rd, 2026 is acknowledged:
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Which is a compound of Formula (I) wherein R1, R2, R3, R4 and R5 are D.
A prior art search was conducted for CAS RN: 2714391-79-2.
This search retrieved prior art.
Therefore, the Examiner’s search will not be extended unnecessarily to additional species in/for/during this Office action.
Claims 1-3 and 18-20 read on the elected species and will be examined herein.
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 1-3 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Fude et al (CN 108721622 A); in view of Meanwell (Journal of Medicinal Chemistry, (2011), 54, 2529–2591).
Regarding claims 1-3 and 18, Fude teaches phenylarsine oxide (PAO) shown below (Description, page 6, Table 1, Compound 1; Claims 6-8)
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which Fude teaches is a PI4KIIIα inhibitor (Description, page 5, lines 45-48). Fude further teaches a pharmaceutical composition comprising phenylarsine oxide and a pharmaceutically acceptable carrier (Description, page 3, lines 26-27; Claims 9-10).
The phenylarsine oxide of Fude has a similar structure to the instantly claimed elected compound, CAS RN: 2714391-79-2; differing only by the bioisosteric substitution of H for D around the phenyl ring of the phenylarsine oxide of Fude in the instantly claimed compound.
Fude does not teach a deuterated phenylarsine oxide.
Meanwell teaches “Substituting a H atom by D represents the most conservative example of bioisosterism given the similarities between the two isotopes, but there are circumstances in drug design where this change can offer a significant advantage” (page 2529, right column, last sentence; page 2530, left column, first sentence). It is well known in drug discovery that replacing H with D is a useful strategy to improve the pharmacokinetic properties of drug candidates when incorporated at sites relevant to metabolic modification; with potential for increasing compound stability and reducing toxicity (page 2530, left column, last sentence; right column first paragraph).
MPEP 2144.09 states:
“Claimed and prior art compounds used in a method would have been expected to have similar activity because the structural difference between the compounds involved a known bioisosteric replacement” In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990).
A prima facie case of obviousness may be made when chemical compounds have very
close structural similarities and similar utilities. "An obviousness rejection based on
similarity in chemical structure and function entails the motivation of one skilled in the
art to make a claimed compound, in the expectation that compounds similar in
structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245,
254 (CCPA 1979).
It would have been prima facie obvious to a person of ordinary skill in the art to modify the phenylarsine oxide of Fude by substituting the H atoms on the phenyl ring with D to arrive at the instantly claimed compound CAS RN: 2714391-79-2. As taught by Meanwell, replacement of H with D is a well-established medicinal chemistry strategy used to improve metabolic stability and enhance pharmacokinetic properties. One of ordinary skill in the art would have been motivated to apply this deuteration strategy to the phenylarsine oxide of Fude in order to improve its metabolic stability and pharmacokinetic properties, as these modifications routinely applied at sites relevant to metabolic modification. Given the close structural similarity between compounds, and thus their shared utility, one of ordinary skill in the art would have reasonably expected the modified compound to retain similar biological properties while potentially exhibiting improved performance. The instantly claimed compound CAS RN: 2714391-79-2 thus represents a predictable variation of the prior art compound phenylarsine oxide, achieved through the routine substitution of one known substituent for another known bio-isosteric equivalent.
“[T]he rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Taken together, all of this would result in the compound and pharmaceutical composition of instant claims 1-3 and 18 with a reasonable expectation of success.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fude et al (CN 108721622 A); in view of Meanwell (Journal of Medicinal Chemistry, (2011), 54, 2529–2591); further in view of Cheresh et al (US 2016/0015709 A1).
Regarding claims 19-20, Fude and Meanwell render obvious the compound and pharmaceutical composition of claims 1-3 and 18 as described above.
Fude and Meanwell do not teach a pharmaceutical composition further comprising a drug for treating a tumor, wherein that drug for treating a tumor is selected from paclitaxel, gemcitabine, cyclophosphamide or temozolomide.
Cheresh teaches that phenylarsine oxide is an NFkB inhibitor (page 19, Table 1, 18th compound listed); and further teaches a therapeutic combination of drugs comprising of an NFkB inhibitor and gemcitabine or paclitaxel (pages 7-8, paragraphs [0115-0116, 0124 and 0132-0133]). It would have been prima facie obvious to a person of ordinary skill in the art to incorporate the phenylarsine oxide of Fude, as modified by deuteration at sites relevant to metabolic modification in view of Meanwell, into the combination therapy taught by Cheresh in order to achieve the known benefits associated with NFkB inhibition in cancer treatment. Cheresh teaches that penylarsine oxide is an NFkB inhibitor, and is useful in combination with gemcitabine or paclitaxel. Meanwell teaches that deuteration, particularly at sites relevant to metabolic modification, exhibits improve metabolic stability and enhanced pharmacokinetic properties. One of ordinary skill in the art would have expected the modified compound to retain similar biological properties while potentially exhibiting improved performance.
“[T]he rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395.
Taken together, all of this would result in the composition of instant claims 19-20 with a reasonable expectation of success.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 18-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 18-19 of copending Application No. 18/697,015 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the deuterated compounds of Formula (I) overlap with the reference application. For instance, the compound
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is found in claim 4 of the reference application on page 7, line 7 as the 5th compound listed. This compound is also present in the instant claims as a compound of Formula (I) wherein R1 and R5 are F; and wherein R2, R3 and R4 are D. Moreover, the pharmaceutical composition of claims 18-19 of the reference application have the same requirements (e.g. a pharmaceutically acceptable carrier, and a second agent such as paclitaxel) as the instantly claimed pharmaceutical composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-3 and 18-20 are rejected.
No claim is allowed.
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/C.L.J./Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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