NON-FINAL REJECTION
This application is a 35 U.S.C. 371 (national stage) application of PCT/CN2021/136117, filed Dec. 7, 2021, which claims benefit of foreign priority to Chinese application 202011437580.2, filed Dec. 7, 2020.
Claims 1-12, as amended, are pending.
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 .
Priority
Acknowledgment is made of applicant's claim to foreign priority under 35 U.S.C. 119(a)-(d).
Information Disclosure Statement
The information disclosure statements (IDS) submitted on May 26, 2023 and Sep. 30, 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (WO2020/239124, cited on the IDS dated 5/26/2023).
Tan et al. disclose compounds of formula (I) as Bruton's tyrosine kinase (BTK) inhibitors
(paras. [0002]-[0008]) for administration to a subject in need thereof in methods of treating hyperproliferative disorders, including tumors and diseases related to tumors (paras. [0218]-[0219]); claims 34-35), as recited by claim 12.
In particular, Tan et al. exemplify compound 32 (Table 1, p. 74),
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which reads on formula (P) as recited by claims 1, 3-6, and 8, to the extent that R1 is C1 alkyl substituted by OH (i.e., hydroxymethyl); R3 is chloro; m is 1 and R4 is o-fluoro; and R5 is -CN.
Tan et al. further exemplify compound 7 (Table 1, p. 71),
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which is identical to the compounds recited by claims 1, 10, and 11 except for the methoxy substituent on the tetrahydropyranyl ring.
Compounds 7 and 32 of Tan et al. differ from the instant claims in that the second substituent (-OCH3, methoxy) on the tetrahydropyranyl ring (circled) is absent:
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However, Tan et al. disclose compounds 7 and 32 as a species of general formula (I),
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in which Ring Q is substituted by R1 (e.g., hydroxymethyl); and is also optionally substituted by RX, which is selected from, e.g., -(CRc1Rd1)tORb1, wherein t is 0, and b1 is C1-10 alkyl, i.e., methoxy (claim 1).
Thus, the reference explicitly discloses and claims compounds of formula (I) in which the tetrahydropyranyl ring is substituted by both hydroxymethyl and methoxy (-OCH3).
Tan et al. further define Formula (I) to include compounds wherein the terminal phenyl ring (R5) is substituted with one or more RX5, including halogen (claim 1),
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,
to yield compounds wherein R4 is halogen and m is 2, as recited by claims 1, 7, and 9.
Tan et al. disclose that synthesis of a compound of formula (I) or a salt thereof may result in the creation of mixtures of different stereoisomers, including enantiomers, such that recitation of a compound is intended to encompass all of the different possible stereoisomers (para. [0240]), including the stereoisomers recited by claims 2, 9, and 11.
It would have been predictable to one of ordinary skill in the art before the effective filing date of the claimed invention to modify compounds 7 and/or 32 of Tan et al. by including a methoxy substituent (-OCH3) on the tetrahydropyranyl ring with a reasonable expectation of success, because Tan et al. disclose, teach, and suggest this modification, as well as exemplify and claim dozens of closely similar compounds, all of which are disclosed to have the same mechanism of action as the claimed compounds, as BTK inhibitors, and to be useful for treating the same tumor-related diseases.
As recognized by MPEP § 2144.09, a prima facie case of obviousness may be made when chemical compounds have (1) very close structural similarities and (2) 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 also In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990).
Conclusion
Claims 1-12 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA E. TOWNSLEY whose telephone number is 571-270-7672. The examiner can normally be reached on Mon-Fri from 9:00 am to 6:00 pm (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Jeff S. Lundgren, can be reached at 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARA ELIZABETH TOWNSLEY/Examiner, Art Unit 1629