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 .
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.
Current Status of 18/048,731
This Office Action is responsive to the arguments and amendments received 17 March 2026.
Claims 51, 54-57, and 59-70 are currently pending.
Election/Restrictions
Applicant’s election without traverse of: Group I, claims 51-64, in the reply filed on 10 November 2023 is acknowledged.
Applicant has also elected the following species:
A species of formula (I) of claim 51, being compound AMC-3-033, shown below:
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The elected group and species have been determined to read on claims 51, 54-57, 59-60, and 63-64.
Claims 61-62 and 65-70 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
A search for Applicant’s elected species did not retrieve applicable prior art. Therefore, the search was expanded only as needed to reach the rejections presented below. See MPEP 803.02; Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App. lnt. 1987).
Priority
Applicant’s claim for the benefit of the prior-filed U.S. provisional patent application 63/270,437 (filed 21 October 2021) under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Response to Amendments
The 35 U.S.C. 112 rejections to the claims, present in the previous office action, are hereby withdrawn due to Applicant’s amendments.
The 35 U.S.C. 102(a)(1) rejections to the claims, present in the previous office action, are hereby withdrawn due to Applicant’s amendments.
The 35 U.S.C. 103 rejections to the claims, present in the previous office action, are hereby withdrawn due to Applicant’s amendments. New rejections under 35 USC 103 are presented herein.
Response to Arguments
The Examiner has herein withdrawn the previous rejections of the instant claims under 35 USC 102 and 35 USC 103. Please see the new rejections presented herein.
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.
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 51, 54-57, 59-60, and 63-64 are rejected under 35 U.S.C. 103 as being unpatentable over:
ZHOU (Previously Cited by Examiner, Zhou, Y.; Liu, X.; Xue, J.; et al. “Discovery of Peptide Boronate Derivatives as Histone Deacetylase and Proteasome Dual Inhibitors for Overcoming Bortezomib Resistance of Multiple Myeloma” J. Med. Chem. 2020, 63, 4701−4715.)
in view of:
MATTESON (Matteson, D.S.; Ray, R. “Directed Chiral Synthesis with Pinanediol Boronic Esters” J. Am. Chem. Soc. 1980, 102, 7590-7591.).
ZHOU teaches a series of compounds that were each designed with a boronate moiety to increase their proteasome binding ability, and the compounds were based upon the structure of bortezomib (abstract). These compounds were intended to treat multiple myeloma (abstract). ZHOU teaches compound ZY-8 in Table 1 on page 4704 therein, as shown below.
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Compound ZY-8 of ZHOU is drawn therein having a (+)-pinanediol boronic ester moiety.
Compound AMC-3-017 is instantly claimed within claim 63, as shown below. Compound 1001 of instant claim 60 is identical to compound AMC-3-017 of instant claim 63. These instantly claimed compounds differ from compound ZY-8 of ZHOU only because the pinanediol stereochemistry.
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MATTESON teaches the use of chiral pinanediol boronic esters in directed chiral syntheses (Pg. 7590, 1st paragraph). MATTESON teaches that both the (+)- and (-)-pinanediol boronic esters can be added onto a compound through esterification (Scheme I and Pg. 7591, 2nd-3rd paragraphs).
It would have been obvious to one of ordinary skill in the art, before the instant effective filing date, to see the pinanediol boronic ester moieties of ZHOU, such as ZY-8, and to have immediately envisaged synthesizing the pinanediol boronic ester moiety with the opposite stereochemistry ((-)-pinanediol), as was shown to be well known within the art by MATTESON, for the purpose of tuning the proteasome binding of the compounds of ZHOU. One of ordinary skill in the art would have expected success with this modification of the compounds of ZHOU, because Figure 1 of ZHOU teaches that a wide variety of boronate derivatives have been utilized within FDA approved proteasome inhibitors , and MATTESON teaches that synthesizing derivatives with both pinanediol enantiomers was known in the literature for a long time.
Regarding claim 64: ZHOU teaches, within the paragraph labeled “Chemistry” on page 4710, that all target molecules therein were subjected to an HPLC method wherein these molecules were dissolved in a mixture of acetonitrile and water. Water is a physiologically compatible carrier medium, and so the solution of compound ZY-8 taught by ZHOU anticipates instant claim 64.
Conclusion
No claims are currently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D MCANANY whose telephone number is (571)270-0850. The examiner can normally be reached 8:30 AM - 5:30 PM.
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, ANDREW D KOSAR can be reached at (571)272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JDMc/Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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