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 .
Detailed Action
Claims 1-2, 4, and 6-22 are currently pending.
Election/Restriction
Applicant’s election without traverse of Group I (Claims 1-2, 4, and 6-15, drawn to PAR-2 inhibitor compounds) and the elected species
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in the reply filed on 2/06/2026 is acknowledged.
Claims 14 and 16-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Group II or unelected species, there being no allowable generic or linking claim. Thus, Claims 1-2, 4, 6-13, and 15 are being examined on the merits herein.
The requirement is deemed proper and is therefore made final.
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.
Claim Rejections - 35 USC § 102
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 1-2, 4, 6-11, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shen (WO2018093696).
Shen teaches DGAT2 inhibitors including Compound 23 on Page 71:
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, in which the following definitions of examined formula (I) apply: X1 and X2 are nitrogen; X3, X4, X5, X6, X7, and X8 are carbon; L is CO; A is an 8-membered heterocyclyl; RX1 is aryl substituted with a halogen; and RX3 is phenyl-RX31, wherein RX31 is halogen. The compound is formulated in compositions comprising carriers and additives (Page 43, Lines 24-28).
Claims 1-2, 4, 6, 9-11, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barr (WO2014028597).
Barr teaches RORgammaT inhibitors including Compound 4M on Page 72:
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, in which the following definitions of examined formula (I) apply: X1 and X2 are nitrogen; X3, X4, X5, X6, X7, and X8 are carbon; L is CO; A is a 6-membered heterocyclyl substituted with two RA, wherein both are methyl; RX1 is C1-alkylene-aryl substituted with a halogen and haloalkyl (RCYC[Wingdings font/0xE0]-L1-RL1, wherein L1 is a bond) and the CH2 of alkylene is replaced by -CO-; and RX3 is -LX3-carbocyclyl substituted with RX31, wherein LX3 is a bond and RX31 is –(C0alkylene)-COOH. Barr teaches the compound in a pharmaceutical composition with excipients (Page 32).
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.
Claims 1-2, 4, 6, 9-12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Barr (WO2014028597).
Barr teaches RORgammaT inhibitors including Compound 4M on Page 72:
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, in which the following definitions of examined formula (I) apply: X1 and X2 are nitrogen; X3, X4, X5, X6, X7, and X8 are carbon; L is CO; A is a 6-membered heterocyclyl substituted with two RA, wherein both are methyl; RX1 is C1-alkylene-aryl substituted with a halogen and haloalkyl (RCYC[Wingdings font/0xE0]-L1-RL1, wherein L1 is a bond) and the CH2 of alkylene is replaced by -CO-; and RX3 is -LX3-carbocyclyl substituted with RX31, wherein LX3 is a bond and RX31 is –(C0alkylene)-COOH. Barr teaches the compound in a pharmaceutical composition with excipients (Page 32).
Regarding Claim 12, Barr does not restrict the placement of the two RA-corresponding alkyl substituents. Further, 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 MPEP 2144.09. One of skill in the art seeking to form a RORgammaT inhibitor as taught by Barr would then find it obvious to reposition a single methyl substituent to bond to an adjacent carbon such that both methyl RA substituents are on the same carbon as required by Claim 12 and expect that a RORgammaT inhibitor would successfully form before the filing date of the instant invention. One would expect success in view of the MPEP teaching and degree of variability taught by Barr with respect to the substitution of the corresponding A-ring structure.
Conclusion
No claim is allowable.
Claim 13 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard G. Peckham whose telephone number is (703)756-4621. The examiner can normally be reached 8:30am - 4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached on (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD GRANT PECKHAM/Examiner, Art Unit 1627
/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627
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