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 .
Election/Restrictions
Applicant’s election of a compound of formula I in the reply filed on 12/18/2025 is acknowledged. Applicants did not specify with or without traverse in their election. 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)).
Applicants elected “Compound 1”, depicted here
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566
645
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. A search for this compound did not find acceptable art. The entire scope of claim 1 was searched. No acceptable prior art was found.
Priority
This application is a national stage entry of PCT/KR2021/005513 and claims foreign priority to KR10-2020-0108099.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
A review of the file wrapper indicates a foreign language priority document. However, since it is not in English, a judgement cannot be made as to whether it supports the instant claims, which is required to perfect foreign priority. The conditions of 35 U.S.C. § 119(a)-(d) or (f) are not met.
Therefore, the effective filing date for the instant claims is the international filing date of 04/30/2021.
Information Disclosure Statement
The information disclosure statements (IDS), submitted on 02/24/2023 and 10/03/2024, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities: “Coronavirus disease-19” is an awkward phrasing of COVID-19, which stands for Coronavirus Disease 2019. The virus that causes this disease is officially named SARS-CoV-2 (Severe Acute Respiratory Syndrome Coronavirus 2). One of these more commonly used names should be used instead. Applicants might also change the 19 to 2019. Appropriate correction is required.
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 1-4 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.
Claim 1 recites R1 and R2 as being able to be one or more of the following choices in the claim. The metes and bounds of this limitation are unclear because it technically allows for 25 R1’s (since 25 is an integer larger than 1). Physically this is impossible since ring A allows for 4 binding sites on the ring and ring C allows for 3 binding sites on the ring. Therefore, the metes and bounds of claim 1 is unclear and thus indefinite.
Because the dependent claims 2-3 do not resolve the rationale underpinning this rejection, they are similarly rejected for the same reason.
There is insufficient antecedent basis for this limitation in claim 4. Claim 4 depends on Claim 1, which recites “coronavirus disease-19”; Claim 4 recites “the coronavirus”. This renders the metes and bounds of claim 4 unclear and thus indefinite. The artisan does not know where antecedent basis for “the coronavirus” is. Therefore, claim 4’s metes and bounds are indefinite.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 2-3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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 recites the elected species ((R)-N-2,3-dimethyoxy-9,11,12,13,13a,14-hexahydrodibenzo-[f,h]pyrrolo[1,2-b]isoqionolin-6-yl)methanesulfonamide). The elected compound is not a compound of Formula I in claim 1 because it lacks R1 on ring A. Therefore, claim 2 fails to further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Art of Record
A search for compounds of formula I returned the following prior art (see “Search 6” in enclosed Search notes). There was, however, no teaching/motivation/suggestion to use any of the compounds of formula I as a treatment for a coronavirus.
KWON (Kwon et al., “Design, Synthesis, and Biological Activity of Sulfonamide Analogues of Antofine and Cryptopleurine as Potent and Orally Active Antitumor Agents”, J. Med. Chem., 2015; cited in the IDS of 2/24/2023) teaches the elected species (compound 5a in Figure 1). KWON uses this compound has antitumor properties.
YANG (Yang et al., “Identification of phenanthroindolizines and phenanthroquinolizidines as novel potent anti-coronaviral agents for porcine enteropathogenic coronavirus transmissible gastroenteritis virus and human severe acute respiratory syndrome coronavirus”, Elsevier, 2010; cited in the IDS of 2/24/2023) teaches that analysis of the structure–activity relations indicated that the most active tylophorine analogues were compounds with a hydroxyl group at the C14 position of the indolizidine moiety or at the C3 position of the phenanthrene moiety and that the quinolizidine counterparts were more potent than indolizidines (abstract).
YANG teaches that their results suggest that tylophorine compounds are novel and potent anti-coronavirus agents that may be developed into therapeutic agents for treating TGEV or SARS CoV infection (abstract).
YANG teaches compounds 4a and 4b are compounds of instant formula I wherein R1 is H or C1 alkoxy, R2 is H or C1 alkoxy, R4 is H, and n is 1 or 2. These compounds differ because there is no R3XHN group. There is no teaching, motivation, or suggestion to change YANG’s compounds or use KWON’s compound above.
KIM (KR20170088695A; cited in the IDS of 10/03/2024) teaches the elected species (and other compounds of formula I) as anticancer agents (page 3 and title).
Conclusion
No claims are allowed as written.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GILLIAN A HUTTER whose telephone number is (571)272-6323. The examiner can normally be reached M-F 7:30-5.
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/G.A.H./Examiner, Art Unit 1625 /Andrew D Kosar/ Supervisory Patent Examiner, Art Unit 1625