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 .
Current Status
This action is responsive to the amended claims of 09/30/2025. Claims 1-26 are pending. Claims 4, 6-15, and 19-26 are withdrawn. Claims 1-3, 5, and 16-18 have been examined on the merits.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-18 and 22-26) and a species of Formula (I) that is
PNG
media_image1.png
206
170
media_image1.png
Greyscale
in the reply filed on 09/30/2025 is acknowledged.
A search for the elected species of Formula (I), shown above, did not retrieve any prior art (see SEARCH 6 of the attached search notes). Thus, the Markush search was extended to the following species:
PNG
media_image2.png
181
303
media_image2.png
Greyscale
.
The extended species reads on claims 1-3, 5, and 16-18.
Claims 4, 6-15, and 22-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species of Formula (I) (i.e., not the extended species above), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/30/2025.
Claims 19-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (Group II), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/30/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The effective filing date is 06/04/2020.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02/24/2023 and 09/10/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings are objected to because the resolution of Figures 1-20 is poor making the graphs/text difficult to read. Please provide higher resolution figures. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. In particular, the title includes the word “novel.” See MPEP 606: the word novel is not considered as part of the title of the invention, this word should not be included in the title of the invention.
Please strike the word “novel” from the title.
Claim Objections
Claims 1-3, 5, and 16-18 are objected to because of the following informalities. Appropriate correction is required.
Claim 1 recite the chemical Formula 1. Examiner requests that Applicant supply a higher resolution image of the Formula to improve readability of the variables. It may also be helpful to increase the text size of the variable X, Y, W, and Z in the Formula structure. Dependent claims 2-3, 5, and 16-18 are similarly objected since they do not rectify the underlying issue.
Claim 3 recites specific chemical moieties in i., iii., and iv. which contain extra spaces between portions of the chemical names. In i., please replace “cyclo pent-3-ene” with “cyclopent-3-ene”. In iii., please replace “5 carbamoyl, 4,5 dihydro 1H pyrrole” with “5-carbamoyl-4,5-dihydro-1H-pyrrole”. In iv., please replace “4,5 dihydro 1H pyrrole 2 carbamoyle” with “4,5-dihydro-1H-pyrrole-2-carbamoyle”. These changes will better align the claim language with typical naming conventions.
Note: withdrawn claims 4, 6, 8, 10, 12, and 14 contain the same issue as described in claim 3 and would be objected to if not withdrawn.
Claim 16 recites “a pharmaceutically acceptable carrier thereof” in the last two lines. The word “thereof” is unnecessary here since the carrier is not derived from anything previously recited in the claim. Please delete the recited occurrence of “thereof”.
In claim 17, please replace “compound of claim 1or a stereoisomer” with “compound of claim 1 or a stereoisomer”. The original claim lacks a space between 1 and or.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 5, and 16-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “Y is carbonyl group bonded to a substituted/unsubstituted homo/hetero cyclic ring with at least one double bond or carboxyl group bonded to alkyl group”. The groups from which Y is chosen are unclear based on the grammar of the recitation. The above phrasing may be read two ways: 1) Y is either a carbonyl group bonded to a ring with at least one double bond or a carboxyl group bonded to an alkyl group; OR alternatively 2) Y is a carbonyl group that is bonded to either a ring with at least one double bond or to a carboxyl group further bonded to an alkyl group. In short it is unclear if Y is chosen from two different groups carbonyl and carboxyl or if Y is always a carbonyl and the substituents are chosen from either a ring with at least one double bond or a carboxyl bound to an alkyl. Thus, the metes and bounds of the claim are undefined rendering the claim indefinite.
Dependent claims 2-3, 5, and 16-18 are similarly rejected since they do not rectify the underlying issue.
Claim 1 also recites “Z is carbonyl/carboxyl group bonded to substituted/unsubstituted homo/hetero cyclic ring with at least one double bond or alkene or O-alkyl carbamate or carbonyl group bonded to branched alkyl group”. The groups from which Y is chosen are unclear based on the grammar and lack of punctuation in the recitation. The above phrasing may be read two ways: 1) Z is a carbonyl/carboxyl group with varied substituents chosen from a ring with at least one double bond, an alkene, an O-alkyl carbamate, or a carbonyl group bonded to a branched alkyl group; OR alternatively 2) Z is chosen from 4 separate groups: (i) a carbonyl/carboxyl group bonded to a ring with at least one double bond, (ii) an alkene, (iii) an O-alkyl carbamate, or (iv) a carbonyl group bonded to branched alkyl group. Thus, the metes and bounds of the claim are undefined rendering the claim indefinite.
Dependent claims 2-3, 5, and 16-18 are similarly rejected since they do not rectify the underlying issue.
Claim 3 recites Y is “carbonyl group bonded to 5 carbamoyl, 4,5 dihydro 1H pyrrole”. It is unclear if Y is chosen from 1 or 2 moieties: is Y carbonyl bonded to 5-carbamoyl-4,5-dihydro-1H-pyrrole OR alternatively is Y carbonyl bonded to either 5-carbamoyl or 4,5-dihydro-1H-pyrrole. The spaces between all parts of the chemical name and the comma after carbamoyl create this ambiguity. Thus, the metes and bound of the claim are undefined rendering the claim indefinite.
Further, in the case that Y is carbonyl bonded to either 5-carbamoyl or 4,5-dihydro-1H-pyrrole, the moiety 5-carbamoyl lacks antecedent basis in the claims. Parent claim 1 recites wherein Y is carbonyl bonded to a ring, not wherein Y is carbonyl bonded to a carbamoyl group. Thus, the metes and bound of the claim are undefined rendering the claim indefinite.
Note: withdrawn claims 4, 8, and 10 contain a similar issue regarding recitation of “carbonyl group bonded to 5 carbamoyl, 4,5 dihydro 1H pyrrole” and would be similarly rejected if not withdrawn.
Claim Rejections - 35 USC § 112(d)
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 3 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. As described above, the moieties from which Y is chosen in claim 3 are ambiguous. In the case that Y is carbonyl bonded to either 5-carbamoyl or 4,5-dihydro-1H-pyrrole, the moiety 5-carbamoyl is outside of the scope of the parent claim. Parent claim 1 recites wherein Y is carbonyl bonded to a ring, not wherein Y is carbonyl bonded to a carbamoyl group. Thus, claim 3 does not properly further limit the claim from which it depends since it recites a chemical moiety outside of the scope of the parent claim. 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.
Note: withdrawn claims 4, 8, and 10 contain a similar issue regarding recitation of “carbonyl group bonded to 5 carbamoyl, 4,5 dihydro 1H pyrrole” and would be similarly rejected if not withdrawn.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5, and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SONG (US 2019/0284149, pub. September 19, 2019).
Regarding claims 1-3 and 5, SONG teaches compound 17
PNG
media_image2.png
181
303
media_image2.png
Greyscale
(Pg. 29 left col. compound 17) wherein X is H, Y is carboxyl group bonded to C1 alkyl group, Z is carbonyl group bonded to unsubstituted heterocyclic ring with at least one double bond that is
PNG
media_image3.png
98
130
media_image3.png
Greyscale
, and W is H.
Regarding claims 17-18, SONG teaches the compound of instant claim 1, above. Thus, SONG teaches the limitation (i) of each of claims 17-18. Regarding the limitation (ii) an instruction for use in treating a disease, disorder, or condition mediated by KRAS, the instructions are viewed as non-functional printed matter.
See MPEP 2112.01(III): “Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004)… explaining "[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.” In the instant case, the instructions are not functionally related to the product, i.e., the compound. Thus, the instructions will not distinguish the claimed compound from the prior art. Since SONG teaches the compound of (i) and since the instructions of (ii) do not distinguish the claims from the prior art, the prior art teaches the structural limitations of the instant claims 17-18.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5, and 17-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by SONG (US 2019/0284149, effectively filed December 21, 2018). Note the effectively filed date of SONG corresponds to the filing date of the U.S. application, thus, no priority document is cited below.
Regarding claims 1-3 and 5, SONG teaches compound 17
PNG
media_image2.png
181
303
media_image2.png
Greyscale
(Pg. 29 left col. compound 17) wherein X is H, Y is carboxyl group bonded to C1 alkyl group, Z is carbonyl group bonded to unsubstituted heterocyclic ring with at least one double bond that is
PNG
media_image3.png
98
130
media_image3.png
Greyscale
, and W is H.
Regarding claims 17-18, SONG teaches the compound of instant claim 1, above. Thus, SONG teaches the limitation (i) of each of claims 17-18. Regarding the limitation (ii) an instruction for use in treating a disease, disorder, or condition mediated by KRAS, the instructions are viewed as non-functional printed matter.
See MPEP 2112.01(III): “Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004)… explaining "[i]f we were to adopt [applicant’s] position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product.” In the instant case, the instructions are not functionally related to the product, i.e., the compound. Thus, the instructions will not distinguish the claimed compound from the prior art. Since SONG teaches the compound of (i) and since the instructions of (ii) do not distinguish the claims from the prior art, the prior art teaches the structural limitations of the instant claims 17-18.
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 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over SONG (US 2019/0284149, pub. September 19, 2019, effectively filed December 21, 2018) as applied to claim 1 above, and further in view of CHAUDHARI (Chaudhari, S.P. & Patil, P.S., Internation Journal of Advances in Pharmacy, Biology, and Chemistry, 2012, 1(1), 21-34).
Determining the Scope and Contents of the Prior Art:
SONG teaches the compound of instant claim 1, see above 102 rejections. SONG further teaches a method of treating cancer comprising administering a compound of the invention (Pg. 62 claim 30) and pharmaceutical compositions of the compound for use in the method (Pg. 44 para 167).
CHAUDHARI teaches dosage forms (i.e., pharmaceutical compositions)
comprising the active pharmaceutical ingredient and excipients are formulated together
to improve patient acceptance (Pg. 21 Abstract & Intro P1). CHAUDHARI teaches
excipients must be inert to the human body (Pg. 22 Right Col. P3), i.e., the excipients
are pharmaceutically acceptable.
Ascertaining the Differences Between the Prior Art and the Claims at Issue:
SONG does not teach the composition further comprising a carrier.
CHAUDHARI does not teach the composition comprising the instant compound.
Resolving the Level of Ordinary Skill in the Pertinent Art:
The level of ordinary skill in the art is represented by an artisan who has sufficient background in the development of a composition useful for the treatment of cancer and possesses the technical knowledge necessary to make adjustments to the composition to optimize/enhance the patient acceptance. Said artisan has also reviewed the problems in the art regarding compositions and carriers/excipients and understands the solutions that are widely-known in the art.
Considering Objective Evidence Present in the Application Indicating Obviousness or Nonobviousness:
The instant claims are prima facie obvious in light of the combination of
references SONG and CHAUDHARI.
The artisan would be motivated to formulate the compound 17 of SONG in a pharmaceutical composition also comprising a pharmaceutically acceptable excipient (i.e., a pharmaceutically acceptable carrier) in order to increase patient acceptance of the compound since the compound is claimed in a method of treatment and pharmaceutical composition (Pg. 62 claim 30 and Pg. 44 para 167). The artisan would have an expectation of success since CHAUDHARI teaches formulations with excipients increase patient acceptance (Pg. 21 Abstract & Intro P1).
Conclusion
Claims 1-3, 5, and 16-18 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA ELIZABETH BELL whose telephone number is (703)756-5372. The examiner can normally be reached Monday-Friday 9:00-5:30.
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, Andrew Kosar can be reached at 571-272-0913. 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.E.B./Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625