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 .
Claim Status
Claims 8-11 and 14 are pending. Claims 8-11 and 14 are rejected.
Response to Amendment
Applicant’s amendment has overcome the previously presented 112d rejection.
Claim Rejections - 35 USC § 112(b)
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 8-10 and 14 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 8-10 recite the broad recitation of Rc1:
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and the claims also recite
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which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 14 is rejected for failing to obviate the indefiniteness of claim 8.
Claim Rejections - 35 USC § 112(d)
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.
Claim 11 is 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 11 recites compounds outside of the scope of independent claim 8 such as the following which possess substituents which are not provided for.
For example, compounds 13, 55, and 65 possess substituents of R1-1 where claim 8 provides for C1-6 alkyl but is silent to further substitution such as with halogens.
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Claim 8 provides for compounds where R1-1 or R1-2 is -ORc and Rc is -C(=O)NRc3Rc4; however, the claim only provides for Rc3 and Rc4 to be unsubstituted C6-20 aryl or C6-20 aryl substituted with R4-1-4 which does not embrace compounds such as 82, 98, and 103 where Rc3 and Rc4 are hydrogen or alkyl:
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.
Compound 109 is not embraced by claim 8 which only provides for R1-1 or R1-2 being -NR12R13 where R12 and R13 are hydrogen, C1-6 alkyl, -C(=O)Rc1, etc., as Rc1 cannot be alkoxy:
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.
Additional substituents that are not provided for R1-1 or R1-2 are cycloalkyl and alkynyl groups as shown in compounds such as 75, 87/89, and 108:
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.
Claim 8 provides for compounds where L2 is -O(RL-1)n1-, RL-1 is C1-6 alkylene, n1 is 0 or 1, and R3 is a substituted or unsubstituted 4- to 12-membered heterocycloalkyl or -NRc1Rc2. Compound 19 does not possess a heterocycloalkyl or NRc1Rc2 corresponding to variable R3, compound 36 lacks linker L2, and compounds such as 56 and 61 have RL-1 substituted by a cycloalkyl:
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.
Compounds 39 and 54 contain a carbonyl linker between R1 and the core structure which is not provided for by claim 8:
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.
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.
Closest Prior Art
Regarding instant claims 8, 9, and 11, the closest prior art is WO 2021231526 A1 by Hoang et al. The prior art discloses the following compound on page 72:
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.
The prior art compound is analogous to compounds of instant formula III where R1 is naphthyl, L2 is -O(RL-1)n1-, RL-1 is C3 alkylene, n1 is 1, and R3 is 5-membered heterocycle containing 1 N heteroatom substituted by one R3-2, R3-2 is C1 alkyl. The prior art differs from the instant compounds in that it lacks the alkyl substituent represented by R4 and has a vinyl substituent for R2 where the instant claims only allow for -CN, C1-3 alkyl or halogen.
Regarding instant claim 11, Hoang et al. disclose the following compound on page 68:
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The prior art compound is analogous to instant compound 25, however it contains a vinyl substituent where the instant compound is unsubstituted:
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Hoang et al. provide no motivation or guidance for preparing the prior art compounds without the vinyl substituents therefore, the prior art neither anticipates nor renders obvious the instant claims.
The closest prior art with regards to instant claim 10 is WO 2022/047093 A1 which discloses the compound of Example 11 shown below (pages 99-100):
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.
The prior art compound is analogous to compounds of instant formula IV where R1 is naphthyl substituted by R1-1, R1-1 is -ORc, Rc is hydrogen, L2 is -O(RL-1)n1-, RL-1 is C3 alkylene, n1 is 1, and R3 is 5-membered heterocycle containing 1 N heteroatom substituted by one R3-2, R3-2 is C1 alkyl. The prior art differs from the instant compounds in that it lacks the alkyl substituent represented by R4 has a vinyl substituent for R2 where the instant claims only allow for -CN, C1-3 alkyl or halogen, and has two halogen substituents on the quinazoline ring.
An additional relevant reference is WO 2022/248885 A2 which discloses the following compound that is identical to compound 48 of instant claim 11 (page 33):
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This disclosure does not anticipate the instant claims as the WIPO was filed May 27th, 2022, and the compound above was not disclosed in the priority documents.
Conclusion
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/A.A.C./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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