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 .
Status of Claims
Claims 1-15 are pending in the instant application. Claims 1-4, 8-10 and 12-13 are amended and claims 14-15 are added via the amendment filed July 2nd, 2026.
Priority
This is a 35 U.S.C. 371 National Stage filing of International Application No. PCT/CN2021/102873 filed June 28th, 2021, which claims priority under 35 U.S.C. 119(a-d) to CN202010633550.2, filed July 6th, 2020. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d).
Withdrawn Rejections
Applicant’s arguments and amendments, filed July 2nd, 2026, with respect to the 112(b) rejection of claim 3 have been fully considered and are persuasive. The 112(b) rejection of claim 3 has been withdrawn.
Applicant has overcome this rejection by amending the claim to remove the “such as” and “or the like” phrases of the claim.
Applicant’s arguments and amendments, filed July 2nd, 2026, with respect to the 112(b) rejection of claim 4 have been fully considered and are persuasive. The 112(b) rejection of claim 4 has been withdrawn.
Applicant has overcome this rejection by amending the claim to remove the “preferably” phrase of the claim.
Applicant’s arguments and amendments, filed July 2nd, 2026, with respect to the 112(b) rejection of claim 8 have been fully considered and are persuasive. The 112(b) rejection of claim 8 has been withdrawn.
Applicant has overcome this rejection by amending the claim to remove the “preferably” phrase.
Applicant’s arguments and amendments, filed July 2nd, 2026, with respect to the 112(b) rejection of claim 12 have been fully considered and are persuasive. The 112(b) rejection of claim 12 has been withdrawn.
Applicant has overcome this rejection by amending the claim to remove the phrase “or the like”.
Applicant’s arguments and amendments, filed July 2nd, 2026, with respect to the 35 U.S.C. 103 rejection of claims 1, 3-4 and 7-12 as being unpatentable over Anton have been fully considered and are persuasive. The 35 U.S.C. 103 rejection of claims 1, 3-4 and 7-12 has been withdrawn.
Applicant has overcome this rejection by amending the claims to remove the option for R4 to be an aryl, the 6th structure of claim 9 and the 2nd structure of claim 10.
Response to Remarks
Applicant’s arguments with respect to the 35 U.S.C. 112(b) rejections have been considered but are moot as Applicant’s amendments have overcome the rejections and the issues of indefiniteness.
Applicant’s arguments with respect to the 35 U.S.C. 103 rejection have been considered but are moot because the new ground of rejection does not rely on Anton, as applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Restriction/Election
Applicant’s election with traverse of 5-(4-((R)-1-(4-(((2-((S)-2,6-dioxopiperidin-3-yl)-1-oxoisoindolin-4-yl)oxy)methyl)phenyl)ethyl)piperazin-l-yl)-2-cyanopyridine to prosecute the invention of Group I, a compound of formula (I) or a composition thereof, in the reply filed on March 23rd, 2025 is acknowledged.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species of the 5-(4-((R)-1-(4-(((2-((S)-2,6-dioxopiperidin-3-yl)-1-oxoisoindolin-4-yl)oxy)methyl)phenyl)ethyl)piperazin-l-yl)-2-cyanopyridine appears allowable. Therefore, according to MPEP 803.02: should the elected species be found allowable, the examination of the Markush-type claim will be extended. If the examination is extended and a non-elected species found not allowable, the Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration. The examination of the Markush-type claims has been extended to include structural species:
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Since a non-elected species has been found not allowable, examination has been limited to claims directed to the elected species, which are presently claims 1, 3-4 and 7-12. Claims 1, 3-4 and 7-12 have been examined to the extent that they are readable on the elected embodiment and the above identified nonelected species. Since the nonelected species has been found not allowable, subject matter not embraced by the elected embodiment or the above identified nonelected species is therefore withdrawn from further consideration.
Election was made with traverse in reply filed March 23rd, 2025. Applicant has traversed the restriction requirement as applicant believes that examining Group I and II would not impose an undue burden on the examiner. However, this argument is not persuasive in view of the art presented below, sufficient to break unity of invention between the Groups.
Claims 2, 5-6 and 13 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention or species.
New 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.
Claim(s) 1, 3-4, 7-12 and 14-15 are newly rejected under 35 U.S.C. 103 as being unpatentable over Man et al (US 2011/0196150 A1, published August 11th, 2011), as necessitated by Applicant’s amendment.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Man teaches compounds of the following general formula (I) (claim 1):
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Man also teaches the following species structure of the general genus (claim 7):
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This compound is nearly embraced by instant formula (I), wherein A is a nitrogen-containing 6-memebered heterocycle, m is 0, R2-R3 are hydrogen, n is 1 and R4 is alkyl, substituted with halogen.
Further, Man teaches that the compound finds utility in treating TNFα related disorders and is a TNFα inhibitor.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The instant claims encompass a compound that differs from the prior art compound (the compound above) by replacement of hydrogen with methyl, i.e. where the carbon adjacent to piperazine has methyl instead of hydrogen.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Regarding the replacement of the hydrogen with methyl in the prior art compound, it is first noted that the prior art generally mentions analogues of the invention. Man teaches prodrugs of the above compound and compounds of the general formula. Man teaches that the term “prodrug” includes a derivative of a compound that can hydrolyze, oxidize, or otherwise react under biological conditions (in vitro or in vivo) to provide the compound. Further, the term includes analogues (paragprah [0097]).
Also, the replacement site is currently undefined by Man, encouraging a PHOSITA to optimize this site of the compound to arrive at the most effective compound.
Further, “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its
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homologs because
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homologs
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often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.” In re Deuel 34 USPQ2d 1210 at 1214. Furthermore MPEP 2144.09 (II) states: “Compounds which are […] homologs (…) 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).”
The issue of patentability over the replacement of alkyl groups for hydrogen has arisen many times. For instance, the replacement of a methylene group with a dialkyl-substituted methylene group was determined to be prima facie obvious on the ground that “one skilled in the art would have been, prima facie, motivated to make the claimed compounds in the expectation that they, too, would possess antimicrobial activity." (In re Wood 199 USPQ 137).
Regarding claim 1, in the instant case, a person having ordinary skill in the art at the time the invention was made would have been motivated to synthesize the instantly claimed homologs with the reasonable expectation that it would have the same utility as the closest structurally related compounds taught by the prior art and with the motivation of obtaining additional useful compounds. Further, one of ordinary skill in the art would have found additional motivation to screen homologs of the prior art to arrive at the instant invention as both the prior art compounds and instantly claimed compounds have utility in treat various types of cancers, in immune therapy and utility in altering levels of expression in TNFα.
Regarding claim 3, ring A is a 6-memerbed monocyclic heterocycle containing two N atoms, R4 is attached to the second N atom and is an alkyl group.
Regarding claim 4, as seen above, the compound where R2 is H and R3 is C1 alkyl has been rendered obvious.
Regarding claim 7, m is 0 in the prior art compound above.
Regarding claim 8, the compound rendered obvious above is of formula II, wherein R5 alkyl, substituted with halogen.
Regarding claims 9-10, Man also teaches the following compound (claim 7):
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This compound is the first structure of instant claim 9 and claim 10, with the same issue of methylation above. As seen above, the replacement of hydrogen and methyl in the compound is obvious to a PHOSITA with the teachings of Man.
Regarding claim 11, Man teaches the above compound in a pharmaceutical composition with a carrier (paragraph [0199]).
Regarding claim 12, Man further teaches that the composition contains at least one additional drug including an additional active agent including Taxotere, an anti-cancer agent (paragraph [0223]).
Regarding claim 14, ring A is piperazine in the first compound above.
Regarding claim 15, Man also teaches the following formula (claim 14):
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, wherein X is N and R12 is heteroaryl.
Conclusion
No claim is allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anna Grace Kuckla whose telephone number is (703)756-5610. The examiner can normally be reached Monday-Friday 7:30-5.
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/A.G.K./ Examiner, Art Unit 1626
/FEREYDOUN G SAJJADI/ Supervisory Patent Examiner, Art Unit 1699
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