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 .
DETAILED ACTION
Claims 1-4, 10, 13, 14, 16, 17, 21-25, 29, 30, 61, 62 and 64 are pending in the application. Claims 1-4, 16, 17, 61 and 64 are rejected. Claims 10, 13, 14, 21-25, 29, 30 and 62 are withdrawn
Restriction/Election of Species
As noted in the Nonfinal Rejection mailed November 17, 2025, the prior art search was extended beyond Applicant’s elected species (see reply filed on October 10, 2025) to include the following non-elected species:
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and
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In view of Applicant’s amendment dated February 17, 2026, the prior art search was further extended to include the following non-elected species:
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Response to Amendments
Objections and rejections made in the Office Action mailed November 17, 2025 that do not appear below have been overcome by Applicant’s amendments to the claims and have been withdrawn.
Response to Arguments - 35 USC § 102
In reply, Applicant traverses the 35 U.S.C. § 102 rejection of claims 2 and 3 as presented in the Nonfinal Rejection mailed November 17, 2025. The 35 U.S.C. § 102 rejection of claims 2 and 3 is rendered moot by Applicant’s amendment dated February 17, 2026 and the rejection is hereby withdrawn.
Response to Arguments - 35 USC § 103
In reply, Applicant traverses the 35 U.S.C. § 103 rejection of claims 1-4, 16, 17, 61 and 64 as presented in the Nonfinal Rejection mailed November 17, 2025.
The previously presented rejection of claim 61 under 35 U.S.C. § 103 in the Office Action mailed November 17, 2025 is rendered moot by Applicant’s amendment dated February 17, 2026 and is hereby withdrawn. Applicant’s arguments regarding claim 61 is also rendered moot in view of Applicant’s amendment. The newly applied rejection of claim 61 under 35 U.S.C. § 103 has been necessitated by Applicant’s amendment dated February 17, 2026.
Applicant’s arguments regarding claims 1-4, 16, 17 and 64 have been fully and carefully considered, but are not found persuasive as indicated below.
Applicant argues that the prior art (i.e., U.S. PGPub. No. 2007/0299086 A1 by Kawamoto et al.) does not provides a basis for selecting Compound 126 as a starting point for further modification. See page 30 of Applicant’s Remarks dated February 17, 2026. To support this argument, Applicant asserts that a person of ordinary skill in the art would not have had a reasonable expectation of obtaining the instantly claimed compound based on the teachings of the prior art in light of the lead compound analysis described in both Otsuka and Takeda. Applicant’s arguments, however, are unpersuasive because the rejected claims do not fall in the paradigm established by the lead compound analysis. In Takeda, the court applied the lead compound analysis to a claim drawn towards a specific compound and not a compound genus, such as the instantly claimed compound of Formula (I). Similarly, Otsuka also applied the lead compound analysis in the context of a claim to a specific compound and not a genus of compounds as seen in the instant situation. Therefore, it is inappropriate to apply the lead compound analysis as described in Takeda and Otsuka to the instant claims as the fact patterns differ. However, for the sake of argument, even if applying the lead compound analysis was appropriate, there is no requirement that a lead compound has to be, for instance, the most active compound to be suitable as a lead. Therefore, although Applicant argues that since “no PHD inhibition data were disclosed for compound 126...[a] person of ordinary skill would not be motivated to select this compound as a starting point for further modification,” nevertheless, a person of ordinary skill would have selected Compound 126 for further modification to provide compounds with structural similarity. “Structural similarity, alone, may be sufficient to give rise to an expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313 (CCPA 1979). The Federal Circuit in Eisai makes it clear that, from the perspective of the law of obviousness, any known compound might possibly serve as a lead compound: “Obviousness based on structural similarity thus can be proved by identification of some motivation that would have led one of ordinary skill in the art to select and then modify a known compound (i.e. a lead compound) in a particular way to achieve the claimed compound.” Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3D 1353, 1357 (Fed. Cir. 2008).
Applicant further argues that the prior art “provides no guidance for making the specific modification to arrive at the instant claims.” See page 31 of Remarks. However, as discussed below in the rejection under 35 U.S.C. § 103, the prior art teaches that the position corresponding to instant variable R1 can be substituted with hydrogen, alkyls or cycloalkyls. See e.g., paragraph [0062]. “When chemical compounds have ‘very close’ structural similarities and similar utilities, without more a prima facie case may be made.” In re Grabiak, 769 F.2d 729, 731 (Fed. Cir. 1985); see also In re Payne 606 F.3d at 313 (“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.”).
“Applicant [further] submits that the PHD inhibition activity of the claimed compounds is entirely unexpected.” See page 31 of Remarks. To support this assertion, Applicant references Table 1 of the instant specification (see paragraph [0998]) which provides IC50 data for the instantly disclosed compounds with respect to PHD isoforms. However, it is unclear how one of ordinary skill in the art could properly determine whether this IC50 data is unexpected or not since, for instance, there is no relative data to compare with as- stated by Applicant- the prior art “contains no data for PHD1 inhibition.” See page 31 of Remarks. The burden is on Applicant to establish evidence of results being unexpected and significant; however, there appears to be a lack of such data required to rebut the evidence of obviousness. See MPEP § 716.02(b). In addition, “[t]he arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.” See MPEP § 716.01(c).
Claim Rejections - 35 USC § 103
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 1-4, 16, 17, 61 and 64 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. PGPub. No. 2007/0299086 A1 (December 27, 2007).
Determining the scope and contents of the prior art (See MPEP § 2141.01)
The broadest disclosure of the prior art (U.S. PGPub. No. 2007/0299086 A1) invention is depicted in the generic chemical formula below (see e.g., paragraph [0061]):
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[AltContent: arrow]When variable definitions taught in the prior art are applied to the above prior art genus, the resulting chemical species are encompassed by the variable definitions of the instantly claimed compound of Formula (I) as discussed in further detail below. In particular, the prior art teaches
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(i.e., Compound 71), [AltContent: arrow]
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(i.e., Compound 126),[AltContent: arrow]
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(i.e., Compound 182) and
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(i.e., Compound 123) as inhibitors of HIF-1α prolyl hydroxylase and representative of the above genus (see e.g., paragraphs [0061], [0197], [0201], [0215], [0216], [0221] [0232] and [0233]). It is noted that although Compounds 71, 123, 126 and 182 teach a hydrogen substituent in the position corresponding to the prior art variable “R1” (as indicated above with an arrow), the prior art also teaches this position can be alternatively be substituted with alkyls or cycloalkyls. See e.g., paragraph [0062].
Regarding instant claims 1 and 4, the prior art teaches Compound 126 represented by the following generic formula wherein R is defined as 1,2,3,4-tetrazol-5-yl (see e.g., paragraphs [0215] and [0216]):
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The prior art Compound 126 is encompassed by variable definitions of the instantly claimed compound of Formula (I), wherein, R2 is hydrogen; R3 is heteroaryl; R4 and R5 are independently hydrogen; and R6 is OH.
Regarding instant claims 2, 3, 16 and 17 [i.e., instant Formula (XXI) as recited in claim 17] the prior art teaches Compound 126 represented by the following generic formula wherein R is defined as 1,2,3,4-tetrazol-5-yl (see e.g., paragraphs [0215] and [0216]):
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The prior art Compound 126 is encompassed by variable definitions of the instantly claimed compound of Formula (I), wherein, R2 is hydrogen; R3 is
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, further wherein G is N or NH; R4 and R5 are independently hydrogen; and R6 is OH (i.e., in claim 2).
Regarding instant claim 61, the prior art teaches Compound 123 having the following chemical structure (see e.g., paragraphs [0216] and [0221]):
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Regarding instant claim 64, the prior art teaches excipients “used in the practice of formulating a safe and effective pharmaceutical composition.”See e.g., paragraph [0345].
Ascertainment of the differences between the prior art and the claims (See MPEP § 2141.02)
As previously stated, the prior art teaches Compounds 71, 126 and 182 each having a hydrogen in the position corresponding to the prior art and instant variable “R1.” Accordingly, Compounds 71, 126 and 182 of the prior art do not meet the instantly claimed requirements for variable R1 e.g., wherein R1 is defined as a C1-3 alkyl (i.e., methyl) as shown below:
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(i.e., Compound 1 as disclosed on page 20 of the instant specification);
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(i.e., Compound 32 as disclosed on page 21 of the instant specification; and
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(i.e., Compound 64 as disclosed on page 25 of the instant specification).
Regarding instant claims 1-4, 16 and 17, the prior art does not teach in Compound 126 a variable definition- in the position corresponding to instant variable R1- which satisfies the instantly claimed requirements for variable R1. However, the prior art does teach that this position (which corresponds to instant variable R1) can be substituted with hydrogen, alkyls or cycloalkyls. See e.g., paragraph [0062].
Regarding instant claim 61, the prior art Compound 123 (shown below) does not meet the instantly claimed requirements with respect to the position corresponding to instant variable R1.
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For instance, Compound No. 28 (reproduced below), as recited in instant claim 61, has a methyl substituent instead of a hydrogen in the position corresponding to instant variable R1.
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The prior art Compound 123 does not teach a methyl substituent in this respective position. However, the prior art teaches that this position corresponding to instant variable R1 can be substituted inter alia with either a hydrogen or alkyl (e.g., methyl). See e.g., paragraph [0062].
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Regarding instant claims 1-4, 16 and 17, based on the teachings of the prior art, a person of ordinary skill in the art would have recognized that variable R1 of the aforementioned prior art genus could be defined as either a hydrogen or an alkyl (e.g., methyl). Accordingly, it would have been obvious to a person of ordinary skill in the art to modify the R1 position of Compound 126 by substituting a hydrogen atom with, for instance, a methyl group. “It is well established that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results.” In re Wood, 199 U.S.P.Q. 137 (C.C.P.A. 1978). Therefore, a person of ordinary skill in the art would be motivated to modify the prior art compound and expect the resulting bioisosteric compound to possess similar HIF-1α prolyl hydroxylase inhibitory activity.
Regarding instant claim 61, Compound 28, as recited in instant claim 61, is rendered obvious in view of Compound 123 of the prior art. See e.g., paragraphs [0216] and [0221]. Considering that the prior art teaches both hydrogen and alkyl (e.g., methyl) as alternatives for variable R1, a person of ordinary skill in the art, at the time the invention was filed, would have found it obvious to modify the prior art Compound 123 by substituting a methyl group for a hydrogen in the position corresponding to variable R1. “It is well established that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results.” In re Wood, 199 U.S.P.Q. 137 (C.C.P.A. 1978). At least in the interest of providing additional HIF-1α prolyl hydroxylase inhibitor compounds with similar activity, a person of ordinary skill would be motivated to modify the teachings of the prior art to arrive at the instantly claimed invention (i.e., Compound 28).
Conclusion
No claims are 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 extension fee 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.
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/D.M.S./Examiner, Art Unit 1626
/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626
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