DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
Claims 1 – 19 are pending.
Claims 5 and 9 are rejected.
Claims 1 – 4, 6 – 8 and 10 – 19 are withdrawn.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 5 – 18, in the reply filed on November 25, 2025 is acknowledged. Applicant further specifically elected the compound of formula, as presented below:
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The elected compound is a compound of formulae 13 (claim 5) and IA1-8H2 (claim 9).
Examination: Claims 5 and 9 read on the elected species The elected species is not allowable over the prior art. Examination of the Markush-type claim has not been extended to include the scope of non-elected species. Claims 1 – 4, 6 – 8 and 10 – 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions/ species, there being no allowable generic or linking claim.
Priority
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Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 31, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
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 5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Xin CN 1911925 A, as cited in the IDS dated January 27, 2023, and evidenced by English translation of CN 1911925 A, Retrieved on January 20, 2026.
Determining the scope and contents of the prior art
Xin teaches compounds having the following general structural formula V,
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, such as compound Illudalic acid. See, e.g., pg. 18, and pg. 20, 2nd – 3rd paragraphs. Compound Illudalic acid is presented below:
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. See, e.g., pg. 18.
Ascertaining the differences between the prior art and the claims at issue
The compound Illudalic acid as taught by Xin has a structure:
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. With respect to claims 5 and 9, Applicant’s elected species has the structure:
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. The difference between the compound Illudalic acid and the claims is two C1 alkyl (methyl) groups instead of hydrogen atoms on the α-carbon of the cyclopentyl ring.
Rationale for a prima facie case of obviousness
Illudalic acid and the compound in the instant claims are considered structural analogs because hydrogen and methyl are deemed obvious variants absent unexpected or unobvious results. In re Wood, Whittaker, Stirling, and Ohta, 582 F.2d 638, 199 U.S.P.Q 137 (C.C.P.A. 1978). According to MPEP §2141(III), one of the rationales in the KSR decision states “(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”. KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Xin further teaches the compound having the following general structural formulae A and V:
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and
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, wherein:
In formula A, R4 and R5 are combined to form the moiety
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, and
Ra and Rb can be the same or different, and can be hydrogen atom or C1-C6 alkyl. See attached English translation, e.g., paragraphs [0017]-[0022].
Xin also teaches that the compounds, including Illudalic acid, are used as inhibitors of leukocyte common antigen-associated protein (LAR) and protein tyrosine phosphatase σ (PTPσ) to treat various types of diabetes, obesity and their complications. See attached English translation, e.g., paragraph [0002]. Illudalic acid was shown to exhibit best inhibitory effect on LAR and mPTP as presented below:
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. See, e.g., Table 1.
A person having ordinary skill in the art would have been motivated to make structural analogs of Illudalic acid because said compound is identified in Xin as a lead compound. The PHOSITA would have had a reasonable expectation that the structural analogs of Illudalic acid, wherein hydrogen atoms are present on the α-carbon of the cyclopentyl ring instead of two methyl groups, would inhibit leukocyte common antigen-associated protein (LAR) and protein tyrosine phosphatase σ (PTPσ) and treat various types of diabetes, obesity and their complications successfully because similar pharmaceutical properties would have been expected from such structurally similar compounds.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sagar Patel whose telephone number is (571)272-1317. The examiner can normally be reached Monday - Friday: 9am to 5pm EST.
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/Sagar Patel/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626