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
This application is a DIV of 17/719,870 (04/13/2022 ABN)
17/719,870 is a CON of PCT/US2021/042956 (07/23/2021)
PCT/US2021/042956 has PRO 63/056,210 (07/24/2020).
The scope of the claims, including claim 3’s formula, do not find support in the provisional application, in particular at least the hydrazineyl group. As a result, the earliest priority date of the claims is determined to be 7/23/2021. MPEP 211.05.
Status
Objections and rejections not reiterated are withdrawn.
Claims 3-7, 16-17, 19, 21-22 are pending. Claims 21-22 are newly presented. Claims 7 19, and 22 are withdrawn.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-18, in the reply filed on 11/11/25 is acknowledged.
Applicant also elected the following species in a call with Eric Williams on 12/18/2025:
benzyl ((2S,3R)-1-(((S)-1-(2-(3-amino-3-oxopropyl)-2-(2-chloroacetyl)hydrazineyl)-3- cyclohexyl-1-oxopropan-2-yl)amino)-3-(tert-butoxy)-1-oxobutan-2-yl)carbamate
p. 10 claims, compound 10:
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having the following structure:
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determined to read on the formula of claim 1 when
W is -C(O)C1-alkyl substituted by Cl;
R6 is C2-alkyl substituted by C(O)NRaRb; Ra and Rb are H;
R2, R3, R5 are H
p is 2
R4 (1) is C1 alkyl substituted by Rb of C6 cycloalkyl;
R4 (2) is C2 alkyl substituted by C4 alkoxy
R1 is C1alkoxy substituted by Ra of C6 aryl.
Thus, the elected species reads on claims 1-6, 16-17.
As detailed in the following rejections, the generic claim encompassing the elected species was not found patentable. Therefore, the provisional election of species is given effect, the examination is restricted to the elected species only, and claims not reading on the elected species are held withdrawn. MPEP 803.02; Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App. lnt. 1987). Accordingly, claims 7-15 are hereby withdrawn.
Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection through amendment, the amended Markush-type claim will be reexamined to the extent necessary to determine patentability of the Markush-type claim. See MPEP 803.02.
New Claim Rejections - 35 USC § 103
Claims 3-6, 16-17, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US20050143320) in view of Kati et al. (Archives of Biochemistry and Biophysics (1999), 362(2), 363-375).
Yang teaches protease inhibitors of “coronaviral 3CL proteases” and “rhinoviral 3C protease” with compound 134 (claimed):
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Yang’s compound differs from the elected species by the right-hand side of the compound (circled above) being a chloromethyl-azaglutamine (-AzaGln-CH2-Cl).
Kati teaches structurally similar peptidyl rhinoviral 3C protease inhibitors compounds (p. 369):
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such as in Table II and III with the acetyl bromide (compounds 7, 10) and acetyl chloride (compound 11) warheads. Kati teaches the compounds as having significant impact at the P1 site (Abstract):
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and was successful in the same context. Kati teaches success with the modification to a bormomethylketonehydrazide (p. 369: “the bromomethylketonehydrazides containing a glutamine-like side chain at P1 may be fairly specific inhibitors of rhinovirus 3C protease”).
Regarding new claims 21, Yang teaches a pharmaceutical composition and treating a viral disease ([0042]).
One of ordinary skill in the art of protease inhibitors following the teaching of Yang would have considered modifications of compound 134 in view of the success of Kati in utilizing the reactive covalently modifying group of bromomethylketonehydrazides to create a more effective protease inhibitor. One of ordinary skill in the art would have had a reasonable expectation of success because of the similarities in structure of the prior art compounds as well as the common protease targets. As evidenced by Kati the level of skill in the art is very high such that one of ordinary skill in the art would consider routine the combination of elements from the teaching of the art including modifying the structure to incorporate a structural element that significantly increased inhibition by more than an order of magnitude. One of ordinary skill in the art would have recognized that the results of the combination would be predictable due to the well-known nature and optimizations routinely performed in the art. Thus, one of ordinary skill in the art would have arrived at the invention as claimed before the effective filing date with a reasonable expectation of success.
Response to Remarks - 35 USC § 103
Applicant argues that the claims as amended are not obvious because one of ordinary skill in the art would not have been motivated to combine the teaching of the cited art with a reasonable expectation of success.
This argument is not persuasive because the cited art is in the same field of endeavor of viral 3C protease inhibitors and share modified peptide-like structural elements such that one of ordinary skill in art would have considered their combination, including the specific covalently modifying inhibitors of Kati.
Conclusion
No claims 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT H HAVLIN whose telephone number is (571)272-9066. The examiner can normally be reached 9am - 6pm.
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, Kortney Klinkel can be reached at (571) 270-5293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT H HAVLIN/Primary Patent Examiner, Art Unit 1626
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