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 .
Receipt is acknowledged of IDS filed on 01/03/2023.
Claims 16-30 are pending.
Claims 1-15 are cancelled.
Claims 27-30 are withdrawn.
Election/Restrictions
Applicant's election with traverse of Group I and species N-(3-(4-([18F]fluoro)butyl-1,1,2,2,3,3,4,4-ds)-4,5-dimethylthiazole-2(3H)-ylidene)-2,2,3,3-tetramethylcyclopropane-1-carboxamide in the reply filed on 09/26/2025 is acknowledged. The traversal is on the ground(s) that MOLDOVAN's compound does not meet the specific variables set forth in formula I. This is not found persuasive because as stated previously MOLDOVAN teaches the core structure of formula I, which is the only constant overlapping feature.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 16-26 are rejected under 35 U.S.C. 103 as being unpatentable over MALDOVAN (Development of a High-Affinity PET Radioligand for Imaging Cannabinoid Subtype 2 Receptor. Journal of Medicinal Chemistry. 2016.) in view of WU (WO 2018/222549).
Regarding claims 16-22, MOLDOVAN teaches the following compound
PNG
media_image1.png
142
124
media_image1.png
Greyscale
(scheme 5), which is used as a positron emission tomography (PET) radioligand for imaging cannabinoid subtype 2 receptor (title and abstract). The elected compound from the instant application is shown by:
PNG
media_image2.png
159
517
media_image2.png
Greyscale
, where X1=CD2, X2=(CD2)n with n=2, X3=CD2 and R=18F.
The only difference between the compound in MOLDOVAN and the elected compound in the instant application is the elected compound has deuterium instead of hydrogen.
WU teaches deuterium substituted PET imaging agents (abstract) that use 18F (claim 16). Substituting out hydrogen for deuterium slows down the in vivo metabolism of the compound, which reduces the loss of the radioactive tracer (page 2, paragraph 0004). This allows for the compound to remain in the body longer and to be imaged better.
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate using deuterium instead of hydrogen. The person of ordinary skill in the art would have been motivated to make those modifications, because it allows for the compound to remain longer in the body for better imaging, and reasonably would have expected success because the references are in the same field of endeavor, such as PET imaging agents using 18F.
Regarding claims 23-26, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Thus, the compound of the prior art would be capable of use as a “medicament” and a “medicament for the diagnostics and therapy of diseases in which a cannabinoid receptor 2 is involved”.
Furthermore, the compound in MOLDOVAN is towards a positron emission tomography (PET) radioligand for imaging cannabinoid subtype 2 receptor, which would read on a medicament that is a radiopharmaceutical for the nuclear-medical imaging of the cannabinoid receptor 2 by means of positron emission tomography (PET).
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA L. MEJIAS whose telephone number is (703)756-5666. The examiner can normally be reached M-F.
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, MICHAEL HARTLEY can be reached at (571) 272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.L.M./Examiner, Art Unit 1618 /JAKE M VU/Primary Examiner, Art Unit 1618