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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1 – 16) drawn to a compound of Formula (I),
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wherein R1-4 are defined and the species election of
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in the reply filed on October 15th, 2025 is acknowledged.
Claims 17 – 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II (a method for treating a heart disease), there being no allowable generic or linking claim. Additionally, claims 7 – 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected chemical species. Election was made without traverse in the reply filed on October 15th, 2025. Hence claims 1 – 6, and 16 are being examined on the merits herein.
However upon searching the elected species
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; the elected species was found to be free of the prior art. Thus the search was expanded to rejoin chemical species with the following features: instant R1, R3, and R4 are phenyl groups with any of the substituent groups as defined by instant claim 1.
While chemical species having instant R1, R3, and R4 are phenyl groups with any substituent groups are rejoined; these chemical features are not encompassed by claims 7 – 15. Thus claims 7 – 15 are still withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected chemical species or rejoined chemical species wherein instant R1, R3, and R4 are phenyl groups with any of the substituent groups as defined by instant claim 1. Nonetheless, the election of species has been modified to only rejoin chemical species wherein instant R1, R3, and R4 are phenyl groups with any substituent groups. Hence the restriction requirement set forth in the office action mailed August 15th, 2025 is maintained.
Hence claims 1 – 6, and 16 are being examined on the merits herein.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 – 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by International Patent Publication WO 2009/099177 A1 to Yasuhara et. al. (herein after Yasuhara’177; cited on the ISR Form).
Regarding claims 1 – 3, Yasuhara’177 teach compound species 4-(chloromethyl)-N-[1-(2-methoxyphenyl)-4-phenyl-1Himidazol-2-yl]benzamide of structure
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(claim 1)(page 27 paragraph 0088) which is embraced by general formula (I) wherein instant R1 , that is Ar1, is a phenyl; instant R2 is H; instant R3 is a phenyl wherein instant R3a is OCH3 and instant R3b is H (claim 2); instant R4 is phenyl wherein instant R4a is CH2Cl in the para-position (claim 3).
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 4 – 6 are rejected under 35 U.S.C. 103 as being unpatentable over International Patent Publication WO 2009/099177 A1 to Yasuhara et. al. (herein after Yasuhara’177; cited on the ISR Form).
The teachings of Yasuhara’177 as they relate to claim 1, from which claims 4 – 6 depend, are given previously in this office action and are fully incorporated here.
However, Yasuhara’177 fails to teach a compound of claim 1, having Formula (II)
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wherein instant R3a is in the para-position with respect to the imidazole (claims 4 – 6), Ar1 is a phenyl, and instant R5 is H (claims 5 – 6).
Nevertheless, Yasuhara’177 does teach compound species 4-(chloromethyl)-N-[1-(2-methoxyphenyl)-4-phenyl-1Himidazol-2-yl]benzamide of structure
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(page 27 paragraph 0088) wherein instant R3 is a phenyl wherein instant R3a is OCH3 and instant R3b is H. Given that the only difference between instant Formula (II) of structure
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and prior art compound is the position of the methoxy, that is prior art (meta position) versus instant claim (para-position), both the prior art compound and the instant compound are positional isomers. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978)(MPEP 2144.09(II)). Thus it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify the prior art compound of Yasuhara’177 by moving the methoxy group from the meta position to the para position of the phenyl ring.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over International Patent Publication WO 2009/099177 A1 to Yasuhara et. al. (herein after Yasuhara’177; cited on the ISR Form).
The teachings of Yasuhara’177 as they relate to claim 1, from which claim 16 depend, are given previously in this office action and are fully incorporated here.
However, Yasuhara’177 fails to teach a pharmaceutical composition comprising a compound of claim 1 or a pharmaceutically acceptable salt hereof and a pharmaceutical acceptable carrier, diluent, or excipient (claim 16).
Nevertheless, Yasuhara’177 further teach that in the metabotropic glutamate receptor mGluR5 the compounds, which includes compound species 4-(chloromethyl)-N-[1-(2-methoxyphenyl)-4-phenyl-1Himidazol-2-yl]benzamide of structure
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(page 27 paragraph 0088) was dissolved in 100 µL of the evaluation buffer which is (20 mM HEPES solution, pH 7.4, containing 130 mM sodium chloride, 5 mM potassium chloride, 1.8 mM calcium chloride, 1 mM magnesium chloride, 10 mM glucose, 2.5 mM probenecid and 0.1% bovine serum albumin (BSA)) (translation pdf page 128 paragraph 1). Thus Yasuhara’177 suggest that the compounds of the disclosure which include, 4-(chloromethyl)-N-[1-(2-methoxyphenyl)-4-phenyl-1Himidazol-2-yl]benzamide, can be dissolved in buffer which further includes water which is a pharmaceutically acceptable carrier.
Therefore it would have been obvious to one of ordinary skill in the art to use the compound of Yasuhara’177 in a pharmaceutical composition which includes water. One of ordinary skill in the art would be motivated to make this modification to administer the compound to a patient as a therapeutic. One of ordinary skill in the art would have had a reasonable expectation of success because the compounds of the disclosure were dissolvable in the solution.
Conclusion
Claims 1 – 6, and 16 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAWANNA S WHITE whose telephone number is (703)756-4687. The examiner can normally be reached 7:00 am - 5:00 pm [EST] M - Th.
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/DAWANNA SHAR-DAY WHITE/Examiner, Art Unit 1627