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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Feb. 20, 2026 has been entered.
Status of the Claims
Claims 1-4, 6-10, 14-16, and 18-26 are pending in this application. Claims 5, 11-13, and 17 have been cancelled by applicant. Claims 1-3 and 23-26 are under examination herein. Claims 4, 6-10, 14-16, and 18-22 are withdrawn from consideration, there being no allowable linking claim.
Allowable Subject Matter
Claims 1-2 and 24 are allowed.
Claim Objections
Claim 23 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim Rejections - 35 USC § 103
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.
Claims 3 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Swinnen et al. (WO 2010/100144 A1 – cited in IDS – previously cited) (“Swinnen”).
Regarding claims 3 and 25-26, Swinnen discloses their compounds of Formulae I and I-f/ g (pages 1-3 and 6) as medicaments for the treatment of cancers – which is the same intended use as the instant compounds (page 1, para. 1). Swinnen’s compounds render the instant compounds of Formula I and III obvious when: Ra (corresponding to instant ring B) is
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, or
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, wherein p can be 0, n can be 1, and Rc can be alkyl (reading on instant methyl piperazine); and Rb (corresponding to instant ring A) can be heteroaryl – Swinnen specifically mentions, Rb (corresponding to instant ring A) can be
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, etc (page 37, bottom), reading on the instant compounds when ring A is
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. Further, Swinnen discloses pharmaceutical compositions comprising their compounds and excipients and/or adjuvants (Swinnen’s claims 14-15) – reading on the instant pharmaceutical compositions.
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Swinnen further discloses their compounds 227 and 228 below as preferred embodiments (page 257).
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(page 257)
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(page 257)
While these preferred embodiments don’t have a nitrogen in the phenyl of the bicyclic core, and have a methoxy group on the pyridine (when instant ring-A is pyridine, it is unsubstituted); Formula I-f/ g show the nitrogen at the same position as the instant compounds of Formulae I and III, and Swinnen discloses that their group Rb can be more preferably
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, etc (page 37, bottom). Thus, Swinnen’s broad genus of compounds having a Formula I-f/ g encompasses the instantly claimed compounds of Formula I and III when ring A is
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and ring B is morpholinyl or piperazinyl.
Therefore, the pharmaceutical compositions comprising the compounds of Formulae I and III in instant claims 3 and 25-26, one having ordinary skill in the art would have found the claimed compositions prima facie obvious, since the compounds therein are generically embraced by Swinnen’s disclosed Formula I-f/ g and preferred embodiments 227 and 228. The requisite motivation for arriving at the claimed compounds, and pharmaceutical compositions thereof, stems from the fact that they fall within the generic class of compounds for the treatment of cancers disclosed by Swinnen et al. Accordingly, one having ordinary skill in the art would have been motivated to prepare any of the compounds embraced by the disclosed generic formula, and pharmaceutical compositions thereof, as disclosed by Swinnen. One of ordinary skill would have further had a reasonable expectation of success because Swinnen discloses pharmaceutical compositions comprising their compounds and excipients and/or adjuvants (Swinnen’s claims 14-15).
Applicant is reminded that a novel useful compound that is isomeric with the prior art compound is unpatentable unless it possesses some unobvious or unexpected beneficial property not possessed by the prior art compound. Therefore, it would have been obvious to one of ordinary skill to expect similar properties of structurally similar compounds since they are suggestive of one another. It has been held that a compound, which is structurally isomeric with a compound of the prior art, is prima facie obvious absent unexpected results.
Response to Arguments
Claims
Claim amendments are acknowledged and have been entered. No new matter has been introduced.
Claim Rejections - 35 USC § 103
Applicant states their arguments from their response to Final Office Action filed December 10th, 2025, are maintained and incorporated herein.
To this, Examiner maintains arguments submitted in the Advisory Action mailed 12/23/2025, which is also incorporated herein.
Upon further consideration, and in light of claim amendments, Applicant’s arguments over Steeneck et al. are persuasive, and 35 USC § 103 rejections of the claims over Steeneck have been withdrawn.
In regards to the rejections over Swinnen et al., Applicant argues Swinnen describes their compounds as PI3 kinase inhibitors, ‘a wholly different protein target from AhR’. Applicant states they teach that introduction of a morpholino or piperazyl at the position corresponding to ring B confers an activity – AhR antagonism – entirely unexpected based on Swinnen’s disclosure. Applicant states one of ordinary skill would not have been motivated with a reasonable expectation of success, to observe this effect over the thousands of combinations encompassed by Swinnen.
In response to Applicant’s arguments, while Swinnen does not specifically disclose their compounds as AhR inhibitors, Swinnen’s compounds are disclosed as useful for the treatment of cancer, which is the same intended use as the instant invention regardless of what protein is being targeted, as argued by Applicant. Furthermore, Swinnen discloses their compounds 227 and 228 below as preferred embodiments (page 257), which read on the instant compounds wherein ring A is pyridine and ring B is morpholino or piperazyl. Applicant is advised that, per MPEP 2112 (I): "[T]he discovery of a previously unappreciated property of a prior art composition (such as inhibition of AhR), or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court held that the claimed promoter sequence obtained by sequencing a prior art plasmid that was not previously sequenced was anticipated by the prior art plasmid which necessarily possessed the same DNA sequence as the claimed oligonucleotides. The court stated that "just as the discovery of properties of a known material does not make it novel, the identification and characterization of a prior art material also does not make it novel."
While these preferred embodiments don’t have a nitrogen in the phenyl of the bicyclic core, and have a methoxy group on the pyridine (when instant ring-A is pyridine, it is unsubstituted); Formula I-f/ g show the nitrogen at the same position as the instant compounds of Formulae I and III, and Swinnen discloses that their group Rb can be more preferably
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, etc (page 37, bottom). Thus, Swinnen’s broad genus of compounds having a Formula I-f/ g encompasses the instantly claimed compounds of Formula I and III when ring A is
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and ring B is morpholinyl or piperazinyl.
Therefore, one having ordinary skill in the art would have found the claimed compositions prima facie obvious, since the compounds therein are generically embraced by Swinnen’s disclosed Formula I-f/ g and preferred embodiments 227 and 228. The requisite motivation for arriving at the claimed compounds, and pharmaceutical compositions thereof, stems from the fact that they fall within the generic class of compounds for the treatment of cancers disclosed by Swinnen et al. Accordingly, one having ordinary skill in the art would have been motivated to prepare any of the compounds embraced by the disclosed generic formula, and pharmaceutical compositions thereof, as disclosed by Swinnen. One of ordinary skill would have further had a reasonable expectation of success because Swinnen discloses pharmaceutical compositions comprising their compounds and excipients and/or adjuvants (Swinnen’s claims 14-15).
In order for applicant’s arguments to be persuasive and overcome the obviousness rejections over Swinnen et al. presented herein, Applicant would need to demonstrate that the instant compounds (in which ring A is pyridine) have a special ability to inhibit AhR not displayed by Swinnen’s preferred embodiments 227 and 228 cited herein, or any special property not displayed by Swinnen’s preferred embodiments.
Applicant is reminded that a novel useful compound that is isomeric with the prior art compound is unpatentable unless it possesses some unobvious or unexpected beneficial property not possessed by the prior art compound. Therefore, it would have been obvious to one of ordinary skill to expect similar properties of structurally similar compounds since they are suggestive of one another. It has been held that a compound, which is structurally isomeric with a compound of the prior art, is prima facie obvious absent unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKSON J HERNANDEZ whose telephone number is (571)272-5382. The examiner can normally be reached Mon - Thurs 7:30 to 5.
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/JACKSON J HERNANDEZ/Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
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