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 the Claims
Claims 1-16 are pending. Claims 6 and 8-16 are withdrawn. Claims 1-5 and 7 are rejected.
Election/Restrictions
Applicant's election of Group I (claims 1-7) and of the elected species
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(see Example 5, page 62 of the specification) without traverse in the reply filed on 12/01/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-5 and 7 read on Applicant’s species election of Example 5. Examination of the elected invention was conducted in accordance with the MPEP 803.02.
The elected species is allowable in view of the prior art; therefore, examination of the Markush-type claim has been extended to the full scope of Formula (IV) of claim 4 and the full scope of Formula (V) of claim 5.
Since art was found on a nonelected species, subject matter not embraced by the above-identified non-elected species is therefore withdrawn from further consideration. Claims 6 and 8-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Priority
This application is a 35 U.S.C. 371 National Stage Filing of International Application No. PCT/US2021/057187, filed 10/29/2021, which claims priority under 35 U.S.C. 119(a-d) to PRO 63/233,263 filed 08/14/2021 and PRO 63/108,094 filed 10/30/2020. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) dated 07/10/2023 has been considered.
Claim Objections
Claims 1 and 7 are objected to because of the following informalities:
Claim 1, page 89, last line of the paragraph beginning “L1 is a bond…”, “subsitiuted” should be spelled “substituted”;
Claim 1, page 89, last paragraph should include “or” between the last two items of the list; and
Claim 2, second line, change “claims” to “claim”.
Appropriate correction is required.
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.
Claims 1-3 and 7 are rejected under 35 U.S.C. 112(b) being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-3 and 7 are rejected because claim 1 recites that “R4 is H, halo, or low alkyl” without defining the relative term “low alkyl”, which renders the claim indefinite. The term “low alkyl” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Dependent claims 2-3 and 7 are rejected as indefinite for the same reason since they do not correct the indefiniteness issue of their parent claim.
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.
Claims 2-5 are rejected under 35 U.S.C. 112(d) 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.
Claim 2, which depends from claim 1, is drawn to a compound of Formula (II),
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, wherein W is CH or N, however Formula (I) of claim 1 requires that the same ring, Q4, is a 6-membered heteroaryl. Thus, claim 2 fails to properly limit claim 1 as it includes species beyond the scope of claim 1 wherein W is CH.
Dependent claims 3-5 are rejected for the same reason since they do not correct the improper dependency issue of their parent claims.
Claims 4-5 are rejected under 35 U.S.C. 112(d) 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.
Claim 4 is drawn to a compound of Formula (IV) wherein the Warhead is defined in part as “
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” or “
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”. Claim 4 ultimately depends from claim 1 which defines the Warhead as
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and R8 as follows:
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. While claim 1 recites that R8 may be an alkyl substituted with an Rd group, and Rd may be an amine, claim 4 as written embraces embodiments outside the scope of claim 1. For example, the embodiment wherein the Warhead of claim 4 is
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wherein Ra is hydrogen and Rb is a -C(O)OH group, is not embraced by claim 1 when the Warhead is
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and R8 is an alkyl because the parent claim does not recite an embodiment wherein the alkyl can be substituted with an -NHC(O)OH group and this group is not considered an amine by a person having ordinary skill in the art.
Applicant may overcome the rejection by, for example, amending claim 4 to remove the cited
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and
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limitations for the Warhead or amending Ra and Rb in the dependent claim to more clearly reflect that the NRaRb groups are intended to be amines.
Dependent claim 5 is rejected for the same reason since it does not correct the improper dependency issue of its parent claim.
Claim Rejections - 35 USC § 102
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.
(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 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Angst et al. in WO 2016/164580 A1.
Ansgt et al. teach composition and methods for treating BTK using amino pyrimidine derivatives. Several examples from the prior art read on the instant claims:
Example 24 on page 263:
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, is embraced by instant Formula (III) of claim 3,
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, wherein:
W is CH;
U and V are each N;
Q3 is phenyl;
Z is -OCH2-;
warhead is
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;
R0 is taken together with L and the atom to which they are attached form a pyrrolidinyl group;
R7 is -NH2 (NH(CH2)pRa, wherein p is 0, Ra is H) wherein j is 1;
R3 is -CH2OH (hydroxyalkyl);
R4 is F;
R6 is H; and
R5 is cyclopropyl (cycloalkyl) wherein n is 1.
Example 25 on page 265:
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, is embraced by instant Formula (IV) of claim 4,
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, wherein:
W is CH;
V is N;
Q3 is phenyl;
Z is -O-;
warhead is
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;
R0 is methyl (alkyl);
L is -L1-L2- wherein L1 is a bond and L2 is an ethylene (alkyl);
R7 is -NH2 (NH(CH2)pRa, wherein p is 0, Ra is H) wherein j is 1;
R3 is -CH2OH (hydroxyalkyl);
R4 is F;
R6 is H; and
R5 is cyclopropyl (cycloalkyl) wherein n is 1.
Example 28 on page 269:
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, is embraced by instant Formula (III) of claim 3,
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, wherein:
W is CH;
U and V are each N;
Q3 is phenyl;
Z is -OCH2-;
warhead is
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;
R0 is taken together with L and the atom to which they are attached form a pyrrolidinyl group which is substituted with one methoxy (alkoxy) as Rd;
R7 is -NH2 (NH(CH2)pRa, wherein p is 0, Ra is H) wherein j is 1;
R3 is -CH2OH (hydroxyalkyl);
R4 is F;
R6 is H; and
R5 is cyclopropyl (cycloalkyl) wherein n is 1.
Example 35 on page 276:
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, is embraced by instant Formula (III) of claim 3,
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, wherein:
W is CH;
U and V are each N;
Q3 is phenyl;
Z is -OCH2-;
warhead is
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;
R0 is taken together with L and the atom to which they are attached form an azetidine group;
R7 is -NH2 (NH(CH2)pRa, wherein p is 0, Ra is H) wherein j is 1;
R3 is -CH2OH (hydroxyalkyl);
R4 is F;
R6 is H; and
R5 is cyclopropyl (cycloalkyl) wherein n is 1.
As it relates to instant claim 7, drawn to a pharmaceutical composition comprising a compound of Formula (I), Angst et al. teach preparation of the cited exemplary compounds (24, 25, 28 and 35) for biological testing beginning on page 313. Angst et al. describe, for instance, the inhibition of BTK enzymatic activity assay to determine the IC50 value of the compounds, including utilizing the compounds in a buffer solution. A person having ordinary skill in the art would expect buffer to serve as a pharmaceutically acceptable diluent or carrier, rendering claim 7 obvious.
Thus claims 1-4 and 7 are anticipated by the prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
(1 of 5) Claims 1-2 and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,501,284. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent ‘284 claims at least one compound that anticipates the instant claimed invention. For instance, ‘284 claims the compound
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(see claim 5) which has the following structure:
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. The compound reads on instant formula (I) of present claim 1 wherein:
Q0 is pyrazinyl (6-membered heteroaryl);
Q2 is piperazinyl (6-membered heterocycloalkyl), see also instant claim 2;
Q3 is pyrrole (5-membered heteroaryl);
Q4 is pyridyl, see also instant claim 2 wherein W is N;
Z is -NH-;
L is -L1-L2- wherein L1 is a phenyl (aryl) and L2 is a bond; wherein L1 is substituted with an Ra piperazinyl (heterocycoalkyl) which is further substituted with two Re groups, methyl (alkyl) and tetrahydropyran (heterocycloalkyl);
warhead is
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;
R0 is H;
R7 is -CH3 (alkyl) or oxo wherein j is 2;
R3 is -CH2OH (hydroxyalkyl);
R4 and R6 are each H; and
two of R5 groups, taken together with the atom to which they are attached, form a cyclopentyl group which is substituted by two methyl groups (two Rd).
Regarding instant claim 7, drawn to a pharmaceutical composition comprising a compound of Formula (I), Patent ‘284 claims the same compounds in an identical pharmaceutical composition, see claim 6:
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.
Thus claims 1-2 and 7 are anticipated by the patented claims.
(2 of 5) Claims 1-2 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-13 of copending Application No. 18/798,308 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because application ‘308 claims the compound
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(see claim 12) which has the following structure:
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. The compound reads on instant formula (I) of present claim 1 wherein:
Q0 is pyrazinyl (6-membered heteroaryl);
Q2 is piperazinyl (6-membered heterocycloalkyl), see also instant claim 2;
Q3 is pyrrole (5-membered heteroaryl);
Q4 is pyridyl, see also instant claim 2 wherein W is N;
Z is -NH-;
L is -L1-L2- wherein L1 is a phenyl (aryl) and L2 is a bond; wherein L1 is substituted with an Ra piperazinyl (heterocycoalkyl) which is further substituted with two Re groups, methyl (alkyl) and tetrahydropyran (heterocycloalkyl);
warhead is
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;
R0 is H;
R7 is -CH3 (alkyl) or oxo wherein j is 2;
R3 is -CH2OH (hydroxyalkyl);
R4 and R6 are each H; and
two of R5 groups, taken together with the atom to which they are attached, form a cyclopentyl group which is substituted by two methyl groups (two Rd).
Regarding instant claim 7, drawn to a pharmaceutical composition comprising a compound of Formula (I), application ‘308 claims the same compound in a pharmaceutical composition, see claim 13:
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.
Thus claims 1-2 and 7 are anticipated by the patented claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
(3 of 5) Claims 1-2 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-6 of copending Application No. 17/431,460 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because application ‘460 claims the compound
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(see claim 5, first compound) which has the following structure:
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. The compound reads on instant formula (I) of present claim 1 wherein:
Q0 is pyrazinyl (6-membered heteroaryl);
Q2 is piperazinyl (6-membered heterocycloalkyl), see also instant claim 2;
Q3 is pyrrole (5-membered heteroaryl);
Q4 is pyridyl, see also instant claim 2 wherein W is N;
Z is -NH-;
L is -L1-L2- wherein L1 is a phenyl (aryl) and L2 is a bond; wherein L1 is substituted with an Ra piperazinyl (heterocycoalkyl) which is further substituted with three Re groups, methyl (alkyl), oxo and oxetanyl (heterocycloalkyl);
warhead is
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;
R0 is H;
R7 is -CH3 (alkyl) or oxo wherein j is 2;
R3 is -CH2OH (hydroxyalkyl);
R4 and R6 are each H; and
two of R5 groups, taken together with the atom to which they are attached, form a cyclopentyl group which is substituted by two methyl groups (two Rd).
Regarding instant claim 7, drawn to a pharmaceutical composition comprising a compound of Formula (I), application ‘460 claims the same compound in a pharmaceutical composition, see claim 6:
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.
Thus claims 1-2 and 7 are anticipated by the patented claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
(4 of 5) Claims 1-2 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 17/764,329 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because application ‘329 claims the compound
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(see claim 14, first compound) which has the following structure:
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. The compound reads on instant formula (I) of present claim 1 wherein:
Q0 is pyrazinyl (6-membered heteroaryl);
Q2 is piperadinyl (6-membered heterocycloalkyl), see also instant claim 2;
Q3 is thiophenyl (5-membered heteroaryl);
Q4 is pyridyl, see also instant claim 2 wherein W is N;
Z is -NH-;
L is -L1-L2- wherein L1 is a phenyl (aryl) and L2 is a bond; wherein L1 is substituted with an Ra piperazinyl (heterocycoalkyl) which is further substituted with two Re groups, trifluoromethyl (haloalkyl), and tetrahydropyranyl (heterocycloalkyl);
warhead is
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;
R0 is H;
R7 is -CH3 (alkyl) or oxo wherein j is 2;
R3 is -CH2OH (hydroxyalkyl);
R4 and R6 are each H; and
two of R5 groups, taken together with the atom to which they are attached, form a cyclohexyl group.
Regarding instant claim 7, drawn to a pharmaceutical composition comprising a compound of Formula (I), application ‘329 claims the same compound in a pharmaceutical composition, see claim 15:
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Thus claims 1-2 and 7 are anticipated by the patented claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
(5 of 5) Claims 1-2 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/020,980 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because application ‘980 claims a tablet composition of the compound
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(see claim 4, second compound) which has the following structure:
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. The compound reads on instant formula (I) of present claim 1 wherein:
Q0 is pyrazinyl (6-membered heteroaryl);
Q2 is piperazinyl (6-membered heterocycloalkyl), see also instant claim 2;
Q3 is pyrrole (5-membered heteroaryl);
Q4 is pyridyl, see also instant claim 2 wherein W is N;
Z is -NH-;
L is -L1-L2- wherein L1 is a phenyl (aryl) and L2 is a bond; wherein L1 is substituted with an Ra piperazinyl (heterocycloalkyl) which is further substituted with two Re groups, methyl (alkyl) and tetrahydropyran (heterocycloalkyl);
warhead is
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;
R0 is H;
R7 is -CH3 (alkyl) or oxo wherein j is 2;
R3 is -CH2OH (hydroxyalkyl);
R4 and R6 are each H; and
two of R5 groups, taken together with the atom to which they are attached, form a cyclopentyl group which is substituted by two methyl groups (two Rd).
Regarding instant claim 7, drawn to a pharmaceutical composition comprising a compound of Formula (I), a person having ordinary skill in the art would expect that a tablet comprising the claimed compound would be used as a pharmaceutical composition.
Thus claims 1-2 and 7 are anticipated by the patented claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jalisa H. Ferguson whose telephone number is (703)756-1489. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L. Clark can be reached on (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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/J.H.F./Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
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