DETAILED ACTION
This office action is in response to applicant’s filing dated December 23, 2025.
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 .
Status of Claims
Claims 1, 7-14, 16-24, and 37-52 are pending in the instant application. Acknowledgement is made of Applicant's amendments filed December 23, 2025. Acknowledgement is made of Applicant's amendment of claims 1 and 16-19; cancelation of claims 2-6, 15, and 25-36.
Applicants elected without traverse Group I, drawn to a compound of Formula (I) as the elected invention and (P)-1-(5-fluoro-2-methoxy-4-((1S,2S)-2- (trifluoromethyl)cyclopropyl)phenyl)-N-(isoxazol-3-yl)-2-oxo-1,2-dihydroquinoline-6- sulfonamide:
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hereinafter referred to as Compound A, as the elected compound of Formula (I) species in the reply filed on August 8, 2025. The requirement is still deemed proper. Claims 12, 18, 20, and 39-52 remain withdrawn.
Compound A is a compound of Formula (I) wherein R1a is a C1haloalk, -CF3; R2 is halo, F; R3 is -O-C1alk, -OCH3; R6 and 7 are hydrogen; R4 is a 5-membered heteroaryl, isoxazole; and R5a, R5b, R5c, R5d, and R5e are each hydrogen.
Claims 1, 7-11, 13, 14, 16, 17, 19, 21-24, 37, and 38 are presently under examination as they relate to the elected species:
Compound A
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Priority
The present application is a 371 of PCT/US21/36894 filed on June 10, 2021, which claims benefit of US Provisional Application No. 63/036,999 filed on June 10, 2020.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on December 15, 2025 and December 23, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objections and/or Rejections and Response to Arguments
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated (Maintained Objections and/or Rejections) or newly applied (New Objections and/or Rejections, Necessitated by Amendment or New Objections and/or Rejections, NOT Necessitated by Amendment). They constitute the complete set presently being applied to the instant application.
Withdrawn Objections and/or Rejections
Double Patenting
The terminal disclaimer filed on December 15, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,807,634 B2 has been reviewed and is accepted. The terminal disclaimer has been recorded. Thus, the rejection of claims 1, 2, 7-11, 13-17, 19, 21-24, 37, and 38 on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,807,634 B2 is withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s arguments with respect to the rejection of claims 1, 2, 7-11, 13-17, 19, 21-24, 37, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Weiss et al (WO 2014/201206 A1, cited in the IDS filed January 13, 2025) have been fully considered and are persuasive. The rejection has been withdrawn.
Maintained Objections and/or Rejections
Double Patenting
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 7-11, 13, 14, 15, 16, 17, 19, 21-24, 37, and 38 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 14 of U.S. Patent No. 12,240,839 in view of Weiss et al (WO 2014/201206 A1, cited in the IDS filed January 13, 2025).
The instant compounds are directed to a compound of formula (I).
The compounds of the previously allowed claims are directed to Compounds of formula (I) (claim 1):
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which inhibit voltage-gated sodium channels, in particular Nav.1.7 (Abstract), including trans-(P)-1-(5-fluoro-2-methoxy-4-(3-(trifluoromethyl)cyclobutyl)phenyl)-N-(isoxazol-3-yl)-2-oxo-1,2-dihydroquinoline-6-sulfonamide:
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The compounds of the previously allowed claims differ from the instantly claimed compounds in that they contain a cyclobutyl instead of the cyclopropyl of the instant claims. However, MPEP 2144.09.I. states:
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, subsection II.A.4.(c). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). In the instant case, the previously compounds of the previously allowed claims are homolog, differing by the successive addition of the same chemical group, e.g., by -CH2- groups, and are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Moreover, Weiss teaches compounds of Formula (I):
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,
and pharmaceutically acceptable salts thereof, that are inhibitors of voltage-gated sodium channels, in particular Nav1.7 (claim 1 and Abstract):
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wherein each of A1 and A2 are CRa (claim 2); wherein Ra includes H (claim 1); wherein each of Rd is independently H (claim 3); wherein R1 is a phenyl ring substituted with 1 to 4 substituents including halo, -OC1-6alkyl, or A, provided at least one R1 is A, wherein A is a ring including a 3 to 6 membered ring, wherein the cycloalkyl group can be substituted with -CF3 (claim 4); and wherein R2 includes an isooxazolyl (claim 11). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to arrive at the elected compound from the previously allowed claims and in view of the teachings Weiss with a reasonable expectation of success, since the prior art establish that similarly structured compounds with variable sized cycloalkyl (i.e. 3 to 6 membered cycloalkyl) are alternatively useful for producing inhibitors of voltage-gated sodium channels, in particular Nav1.7.
Thus, resulting in the compounds of the instant claims.
Response to Arguments
Applicant argues:
The compounds of Formula (Ia) of amended claim 1 contain particular cyclopropyl groups that are substituted with only one specific R1a substituent at the 2- position (i.e., at the carbon adjacent to the carbon that is bonded to rest of the compound). These specifically claimed compounds exhibit unexpectedly superior results in both increased inhibition ofNav1.7 channels and decreased induction of CYP3A4 activity, as demonstrated by the Examples of the present disclosure. The compounds of claims 1-7 and 14 of the '839 differ from the compounds of Weiss in at least the inclusion of particular cyclobutyl moieties that have only one specific substituent at the 3-position of the cyclobutyl ring (i.e., 2 carbons removed from the carbon that is bonded to rest of the compound). Of the approximately 1000+ compounds described in Weiss, there are only very few that include a cyclopropyl at the position of the specifically substituted cyclopropyl group in the present claims, and each only include an unsubstituted cyclopropyl group. Thus, absent impermissible hindsight, a person of ordinary skill in the art would not be motivated by Weiss to modify the 3-carbon substituted cyclobutyl compounds (i.e., 2 carbons removed from the carbon that is bonded to rest of the compound) claimed by the '839 to obtain compounds containing cyclopropyl groups having only one specific substituent at the 2-position (i.e., at the carbon adjacent to the carbon that is bonded to rest of the compound), as presently claimed.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
As set forth above, the compounds of the previously allowed claims differ from the instantly claimed compounds in that they contain a cyclobutyl instead of the cyclopropyl of the instant claims. In particular, the elected compound differs from the previously disclosed compound in that it contains a cyclobutyl instead of a cyclopropyl. However, MPEP 2144.09.I. states:
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
In the instant case, the previously compounds of the previously allowed claims are homolog, differing by the successive addition of the same chemical group, e.g., by -CH2- groups, and are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
With regard to argument that substituting the cyclopropyl ring results in unexpected properties, the Examiner notes that the compounds of the copending claims require that the cyclobutyl ring is substituted with the same or very similar substituents. Thus, the only difference is the successive addition of the same chemical group, e.g., by -CH2- groups and the data provided does not support unexpected properties of the claimed compounds compared to those of the previously allowed claims.
Regarding the argument that a person of ordinary skill in the art would not be motivated by Weiss to modify the 3-carbon substituted cyclobutyl compounds (i.e., 2 carbons removed from the carbon that is bonded to rest of the compound) claimed by the '839 to obtain compounds containing cyclopropyl groups having only one specific substituent at the 2-position (i.e., at the carbon adjacent to the carbon that is bonded to rest of the compound), as presently claimed, the Examiner notes that modifying the cyclobutyl ring to a cyclopropyl ring would result in a compound having a substitution 2 carbons removed on one side of the cyclopropyl and 1 carbon removed on the other side of the cyclopropyl ring.
Thus, the rejection is maintained.
Conclusion
Claims 1, 7-11, 13, 14, 16, 17, 19, 21-24, 37, and 38 are rejected.
No claim is allowed.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYNA B RODRIGUEZ whose telephone number is (571)272-7088. The examiner can normally be reached 8am-5:00pm, Monday - Thursday.
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, Amy L Clark can be reached at 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Rayna Rodriguez/Primary Examiner, Art Unit 1628
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