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 .
Acknowledgments and Claim Status
The Examiner acknowledges receipt of the amendment filed 11/7/2023 wherein claims 2-4, 6, 10, 12, 14, 16, 18, 21, 25, 28-30, 32-48, 51-53, and 55-72 were canceled and claims 5, 7-9, 11, 13, 15, 17, 19, 20, 22-24, 26, 31, 49, 50, and 54 were amended. In addition, the Examiner acknowledges receipt of the amendment filed 5/11/2023 wherein the specification was amended.
Note(s): Claims 1, 5, 7-9, 11, 13, 15, 17, 19, 20, 22-24, 26, 27, 31, 49, 50, and 54 are pending.
Priority
This application is a 371 of PCT/US2021/059500 filed 11/16/2021 and PCT/US2021/059500 claims benefit to PRO 63114955 filed 11/17/2020.
Note(s): The earliest effective filing date is 11/16/2021 as the pending Formula I is full disclosed therein. It is duly noted that the provisional applicant does not disclose the structure in pending independent claim 1.
Claim Interpretation
Independent claim 1 is directed to compounds of Formula I,
PNG
media_image1.png
143
207
media_image1.png
Greyscale
, wherein the variables are as defined therein.
Claim 54 is directed to a method of magnetic resonance imaging of a subject as set forth therein.
Information Disclosure Statement
The information disclosure statement filed 11/13/2023 was considered.
103 Rejection
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, 5, 7-9, 11, 13, 15, 17, 19, 20, 22-24, 26, 27, 31, 49, 50, and 54 are rejected under 35 U.S.C. 103 as being obvious over Wang et al (Inorganic Chemistry, 2020, Vol. 59, pages 17712-17721).
The applied reference has common inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). (See details below)
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Independent claim 1 is directed to compounds of Formula I,
PNG
media_image1.png
143
207
media_image1.png
Greyscale
, wherein the variables are as defined therein.
Claim 5 is directed to Ring A being a 5-10 membered heterocycloalkyl. Claim 7 is directed to Ring A being a 5-6 membered heteroaryl. Claim 8 is directed to specific five- and six-membered rings as set forth therein. Claim 9 is directed to compounds wherein m is zero. Claim 11 is directed to various R1 values as set forth therein. Claim 15 is directed to compounds wherein n is zero. Claim 17 is directed to values of R2 as specified therein. Claim 24 is directed to compounds wherein p is zero. Claim 26 is directed to various R3 values as set forth therein. Claim 50 is directed to a composition of Formula I comprising a pharmaceutically acceptable salt of solvate thereof and a pharmaceutically carrier.
Claim 13 is directed to Ring B being C5-C7 cycloalkyl.
Claim 19 is directed to Ring C being a 5-6 membered heterocycloalkyl. Claim 20 is directed to specific Ring C values as set forth therein. Claim 22 is directed to Ring C being a 5-6 membered heteroaryl. Claim 23 is directed to specific values for Ring C as set forth therein.
Wang et al disclose iron complexes that may be used for magnetic resonance imaging (MRI). In particular, Wang et al disclose the species Wang et al disclose the structure
PNG
media_image2.png
191
199
media_image2.png
Greyscale
(page 17712, abstract; page 17713, Chart 1 B; page 17714, Scheme 1) and
PNG
media_image3.png
192
204
media_image3.png
Greyscale
(page 17713, Chart 1 B & C; page 17714, Scheme 1). The species meet the limitations of claims 1, 5, 7-9, 11, 13, 15, 17, 19, 20, 22-24, 26, 50 as explained supra.
Claim 27 is directed to the compound,
PNG
media_image4.png
115
145
media_image4.png
Greyscale
.
Wang et al disclose the structure
PNG
media_image2.png
191
199
media_image2.png
Greyscale
(page 17712, abstract; page 17713, Chart 1 B; page 17714, Scheme 1. Thus, the limitation of claim 27 is met.
Claim 31 is directed to compound relaxivity being about 1.0 to about 5.0. Claim 49 is directed to the compound relaxivity of about 1.2 to about 2.3 at a pH of 6 and about 0.06 to about 0.25 at a pH of 7.4.
Wang et al disclose Figure 1 (page 17714, see excerpt below) which shows pH dependence on Fe-Py-Cy2Al-Me relaxivity and Scheme 2 (page 17715) which is directed to relaxivity between pH 6.0 and 7.4 (see excerpt below).
PNG
media_image5.png
434
961
media_image5.png
Greyscale
PNG
media_image6.png
640
640
media_image6.png
Greyscale
Table 3 (page 17717, see excerpt below) discloses the relaxivity of ML and ML(OH). As indicated from Figure 1 and Scheme 2 which encompass species of Applicant’s Formula I, the relaxivity values of claims 31 and 49 are met.
PNG
media_image7.png
299
947
media_image7.png
Greyscale
Claim 54 is directed to a method of magnetic resonance imaging of a subject as set forth therein.
Wang et al disclose that the compounds therein are useful as magnetic imaging probe and are relevant to imaging human pathologic tissue. It is disclosed that the complexes therein should be readily detected in vivo following a typical 0.1 mmol/kg intravenous dose of MR imaging probe (page 17717, right column third complete paragraph). In addition, Wang et al disclose that Fe-Py-cy2AI is thermodynamically stable within the range of pH values encountered in human tissue and at concentrations achievable by using a typical intravenous dose of MR imaging probe. As a result, the skilled artisan would recognize that one may perform magnetic resonance imaging on a subject. Hence, the limitation of claim 54 is met.
Conclusion
Claims 1, 5, 7-9, 11, 13, 15, 17, 19, 20, 22-24, 26, 27, 31, 49, 50, and 54 are rejected.
Future Correspondences
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D L Jones whose telephone number is (571)272-0617. The examiner can normally be reached M-F.
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, Michael G. Hartley can be reached at (571)272-0616. 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.
/D. L. Jones/
Primary Patent Examiner
Art Unit 1618
January 27, 2026