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 .
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Status of the Claims
Claims 1, 6-7, and 11-16 are pending in this application. Claims 2-5, 8-10, and 17-25 have been cancelled by applicant.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim reads: “R1B and R1C … from H, and unsubstituted or substituted C-1-C6 alkyl, …, COORA,” – Claim should read: “R1B and R1C … from H, unsubstituted or substituted C-1-C6 alkyl, …, and COORA”. [emphasis added].
Also, the comma after “H” in the 3rd to last line of claim 1 should be removed to read “H and C-1-C3 alkyl”.
Claims 6-7, and 11-16 are also objected for depending upon the limitations of an objected claim.
Appropriate correction is required.
Examiner Notes
Claims 1, 6-7, and 12-16 are free of the prior art, however, claim 1 stands objected to over formal matters. Claims 6-7 and 12-16 are also objected to for depending upon the limitations of an objected claim, therefore, no claims are allowed until formal matters are resolved.
Claim Rejections - 35 USC § 112
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.
Claim 11 is 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 11 is rejected for failing to further limit claim 1, from which it depends. Claim 1 refers to the compounds of formula 100 and 101, with a cyclohexene group in the position alpha to the nitrogen. Claim 11, however, expands this limitation to encompass compounds 200 and 201, which have a p-Cl-phenyl in this position.
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.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Vasioukhin et al, (WO 2009/151920 A2 – cited in the IDS – previously cited) (“Vasioukhin”).
Claim 11 is broader than claim 1 (see 112(d)) – therefore this rejection applies:
Regarding claim 11, Vasioukhin discloses the compounds of Formula V below (page 4 and Vasioukhin’s claims 1 and 15) in a method of preventing or attenuating cancer progression or blocking metastasis in a subject known to have or at risk of having prostate cancer, ovarian carcinoma, endometrial cancer, or renal cell carcinoma comprising administration of the compound, which is disclosed as a hepsin inhibitor. Formula V reads on instant compounds 200 and 201 when: R1a (corresponding to instant R1B, 1C and -NO2) can be H, alkyl, halo, -OR7, -C(O)OR7, -CN, -NO2, etc., wherein R7 can be H or alkyl; R1b (corresponding to instant Cl) can be halo; R2 can be H; R3 can be H; and wherein r can be 1-4.
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Vasioukhin further discloses the preferred embodiment compound V-2 below, which reads on the instant compounds when R1B and R1C are H. While V-2 doesn’t specifically show the instantly claimed arrangements of the groups around the phenyl rings, Applicant is advised that similar properties may normally be presumed when compounds are very close in structure. Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also In re Grabiak, 769 F.2d 729, 731, 226 USPQ 870, 871 (Fed. Cir. 1985) (“When chemical compounds have very close structural similarities and similar utilities, without more a prima facie case may be made.”). Thus, evidence of similar properties or evidence of any useful properties disclosed in the prior art that would be expected to be shared by the claimed invention weighs in favor of a conclusion that the claimed invention would have been obvious. Dillon, 919 F.2d at 697-98, 16 USPQ2d at 1905; In re Wilder, 563 F.2d 457, 461, 195 USPQ 426, 430 (CCPA 1977); In re Linter, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972) (see MPEP 2144.08(d)).
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(V-2, page 32, line 10)
Therefore, it would have been prima facie obvious to administer compound 201 to a subject in order to treat or inhibit the development of metastasis. One of ordinary skill would have been motivated to do so with a reasonable expectation of success in view of Vasioukhin’s disclosure of their compounds of Formula V and their preferred embodiment V-2 for use in the treatment or attenuation of cancer progression or blocking metastasis (see page 4 and Vasioukhin’s claims 1 and 15).
Response to Arguments
Claims/ Claim Objections
Claim amendments are acknowledged. No new matter has been introduced.
Applicant’s arguments, see page 7, filed 02/16/2026, with respect to objections to the claims have been fully considered and are persuasive. The objection of the claims has been withdrawn. However, upon further consideration, a new ground of objection is made in view of claim amendments.
Specification
Amendments to the specification are acknowledged and have been entered. The objection to the specification has been withdrawn.
Drawings
Applicant’s arguments, see page 7, filed 02/16/2026, with respect to objections to the drawings have been fully considered and are persuasive. The objection of the drawings has been withdrawn. However, upon further consideration, a new ground of objection is made in view of the fact that the drawings filed 02/26/2026 contain color drawings.
Claim Rejections - 35 USC § 112(b)
Applicant’s arguments, see page 8, filed 02/16/2026, with respect to 35 USC § 112(b) rejection of the claims have been fully considered and are persuasive. The 35 USC § 112(b) rejection of the claims has been withdrawn.
Claim Rejections - 35 USC § 112(d)
Applicant’s arguments, see page 8, filed 02/16/2026, with respect to 35 USC § 112(d) rejection of the claims have been fully considered and are persuasive. The 35 USC § 112(d) rejection of the claims has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of claim amendments.
Claim Rejections - 35 USC § 102
Applicant’s arguments, see page 8, filed 02/16/2026, with respect to 35 USC § 102 rejection of the claims have been fully considered and are persuasive. The 35 USC § 102 rejection of the claims has been withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s arguments, see page 8, filed 02/16/2026, with respect to 35 USC § 103 rejection of the claims have been fully considered and are persuasive for all pending claims, except claim 11. The 35 USC § 103 rejection of the claims has been withdrawn for all pending claims except 11.
Applicant argues that including the limitations of previously indicated as “free of the art” claim 10 (see non-final rejection mailed 11/24/2025) into newly amended claim 1 resolves the issues with instant claim 11. However, this is not the case. Amendments raised new 112(d) issues and failed to resolve the prior art rejection.
This action is final.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/JACKSON J HERNANDEZ/Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627