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 .
Application Status
The preliminary amendment filed on 3/07/2023 is acknowledged. Claims 1-10, 18 and 25-26 are currently pending and under consideration
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement filed on 3/07/2023 and 1/12/2024 have been considered except when lined through.
Claim Rejections - 35 USC § 112
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, 5-7, 9-10, 18 and 25-26 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.
Instant claim 1 is drawn to a compound represented by chemical formula I having the structure:
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, wherein R2 is O or is absent. However, it is unclear what R2 is supposed to be if O is absent. For example, if O is absent, is R suppose to be a carbon? Does the double bond go away, leaving two hydrogens?
Claim 9 recites the limitation "
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" . There is insufficient antecedent basis for this limitation in the claim, since claim 1 does not appear to contemplate R2 being H or a lack of a double bond.
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.
Claim(s) 1-7, 9-10, 18 and 25-26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yu, Qiang et al. (CN103193691, 2013-07-10, IDS, English google translation provided). Please note: All citations to the teachings of the CN document will be in relation to the Google English Translation
Yu, Qiang et al. teach a compound of formula V having the following generic structure:
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(Contents of the Invention). In particular, the Yu, Qiang et al. provide numbers compounds including, but not limited to,
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(6d) and a compound referred to as 2-(4-Methyl-N-(3-(trifluoromethyl)phenyl)benzenesulfonamido)acetamide having the structure
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(4c), which read on the instantly claimed compound of Formula I wherein R 1 is NH-R5 (R5 is OH or H), R2 is O, R3 is C1 alkyl group substituted with F, R4 is SO2-R7, wherein R7 is aryl substituted with an alkoxy or alkyl. The CN document further teaches a fifth aspect of the invention provides a pharmaceutical composition comprising a compound of formula V or a pharmaceutically acceptable salt thereof and one or more carriers, wherein in a sixth aspect said pharmaceutical composition is used for suppressing tumor cell growth or treating a tumor (Fifth aspect). With regards to the tumor, the CN document teaches tumors includes, but are not limited to, liver, leukemia, gastric, esophageal, ovarian, breast, colon, sarcoma, lung, pancreatic and cervical cancer (Under sixth aspect). Lastly, the CN document teaches an in vivo pharmacodynamic evaluation in tumor bearing nude mice, wherein the results showed that the compounds of formula V such as 4c had significant tumor inhibitor effects in vivo (Example 45).
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) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu, Qiang et al. (CN103193691, 2013-07-10, IDS, English google translation provided), as applied to claims 1-7, 9-10, 18 and 25-26 above. Please note: All citations to the teachings of the CN document will be in relation to the Google English Translation
Yu, Qiang et al. teach a compound of formula V having the following generic structure:
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(Contents of the Invention). In particular, the Yu, Qiang et al. provide numbers compounds including, but not limited to,
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(6d) and a compound referred to as 2-(4-Methyl-N-(3-(trifluoromethyl)phenyl)benzenesulfonamido)acetamide having the structure
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(4c), which read on the instantly claimed compound of Formula I wherein R 1 is NH-R5 (R5 is OH or H), R2 is O, R3 is C1 alkyl group substituted with F, R4 is SO2-R7, wherein R7 is aryl substituted with an alkoxy or alkyl. The CN document further teaches a fifth aspect of the invention provides a pharmaceutical composition comprising a compound of formula V or a pharmaceutically acceptable salt thereof and one or more carriers, wherein in a sixth aspect said pharmaceutical composition is used for suppressing tumor cell growth or treating a tumor (Fifth aspect). With regards to the tumor, the CN document teaches tumors includes, but are not limited to, liver, leukemia, gastric, esophageal, ovarian, breast, colon, sarcoma, lung, pancreatic and cervical cancer (Under sixth aspect). Lastly, the CN document teaches an in vivo pharmacodynamic evaluation in tumor bearing nude mice, wherein the results showed that the compounds of formula V such as 4c had significant tumor inhibitor effects in vivo (Example 45).
Yu, Qiang et al. differs from instant claim 8 in that the CF3 group of Yu, Qiang et al. is in the meta position vs. the para position in claim 8.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to select compound 4c and modify the compound to move the CF3 from the meta to the para position. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-Yu, Qiang et al. teach that compound 4c has significant tumor inhibiting effects in vivo.
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). See MPEP 2177.09(II)
Conclusion
Therefore, No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON J FETTEROLF whose telephone number is (571)272-2919. The examiner can normally be reached M-F 6AM-4PM.
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/BRANDON J FETTEROLF/Primary Examiner, Art Unit 1626