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 .
Current Status of 18/256,645
Claims 1-3, 6, and 8-11 have undergone amendments. Claims 5 and 7 have been cancelled. Thus, Claims 1-4, 6, and 8-11, submitted on 12 May 2026, represent all claims currently under consideration.
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.
Response to Arguments
The objections to Claims 1 and 10-11 are each withdrawn. Applicant has corrected the typographical error, and has defined the abbreviations which were contained in the claims.
The 35 U.S.C. § 101 rejection of Claims 7 and 8 are withdrawn. Claim 7 has been cancelled, rendering the rejection moot, and Claim 8 has been amended to a method claim.
The 35 U.S.C. § 112(a) rejection of Claims 5-8 are each withdrawn. Applicant has amended the claims to remove “prophylaxis”, and has further defined the conditions to be treated as those which are associated with soluble guanylate cyclase activity, which are all enabled by the specification.
The 35 U.S.C. § 112(b) rejections of the previous Office action are each withdrawn. Applicant has amended each claim to overcome the indefiniteness.
The provisional and non-provisional non-statutory patenting rejections are each maintained as Applicant has not provided reasons as to why they should be withdrawn (See below).
Claim Objections
Claims 1-4 are objected to because of the following informalities: Each of the claims are directed towards more than one salt, solvate, or solvate of salts thereof “salts thereof, solvates thereof, or solvates of the salts thereof”. The claims should be directed towards a singular compound. The Examiner suggests amending the claims to read “or a salt, solvate, or solvate of a salt thereof” or similar. Appropriate correction is required.
Double Patenting- REJECTIONS MAINTAINED
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 6, and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 6, and 9-11 of copending Application No. 18/256,647 (‘647) (Amended claims of 9 23 March 2026) in view of Meanwell (J. Med. Chem., 2018, 61, 5822-5880).
Claim 1 of ‘647 is directed to a compound of Formula (I)
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wherein R1 and R2 are hydrogen or halogen, R3 is chloro or trifluoromethyl, R4 is hydrogen or C1-C4 alkyl, R5 is C1-C6 alkyl, X1 and X2 are nitrogen or carbon. Claim 2 is directed to a compound according to claim 1 wherein R1 and R2 are hydrogen or fluorine, R3 is chloro or trifluoromethyl, R4 is hydrogen or methyl, R5 is isobutyl, and X1 and X2 are nitrogen or carbon. Claim 3 is directed to a compound according to claim 1 of formula
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. Claim 5 is directed to a compound according to claim 1 for use in the treatment and/or prophylaxis of diseases. Claim 6 claims a compound according to claim 1 for use in the treatment and/or prophylaxis of heart failure, hypertension, chronic and diabetic kidney disease, pulmonary hypertension, systemic sclerosis, sickle cell disease, neurodegenerative diseases and dementia, and diabetic foot ulcer. Claim 9 claims a medicament comprising a compound according to claim 1 in combination with an inert, nontoxic pharmaceutically acceptable excipient. Claim 10 claims a method for the treatment and/or prophylaxis of heart failure, hypertension, chronic and diabetic kidney disease, pulmonary hypertension, systemic sclerosis, sickle cell disease, neurodegenerative diseases and dementia, and diabetic foot ulcer, comprising administering a therapeutically effective amount of the medicament of claim 9 to a human or animal in need thereof. Claim 11 is directed to a method for the treatment and/or prophylaxis of heart failure, hypertension, chronic and diabetic kidney disease, pulmonary hypertension, systemic sclerosis, sickle cell disease, and diabetic foot ulcer in humans and animals comprising administering a therapeutically effective amount of at least one compound according to claim 1.
The compounds of ‘647 and the examined application differ by the presence of halogenated or fluorinated alkyl groups at the variable R5 (analogous to variable R6 of the examined application) position.
Meanwell teaches the use of fluorine and fluorinated motifs in drug development and their use as bioisosteres. The electronic properties and relatively small size of fluorine endow it with considerable versatility as a bioisostere and it has found application as a substitute for lone pairs of electrons, the hydrogen atom, and the methyl group while also acting as a functional mimetic of the carbonyl, carbinol, and nitrile moieties. Fluorine substitution can influence the potency, conformation, metabolism, membrane permeability, and P-gp recognition of a molecule (Abstract). The use of bioisosteres is a common principle in drug design. Introduction of fluorine can increase the overall lipophilicity of a molecule (Page 5823). The replacement of hydrogen with fluorine can lead to resistance towards oxidative metabolism, and fluorination has developed into a popular approach to address the poor pharmacokinetic performance of drug-like compounds in vitro and in vivo (Page 5824). Table 12 shows the physicochemical data of fluorinated derivatives of drug-like compounds, demonstrating that introduction of fluorine can modulate solubility and LogP of compounds. Further, addition of fluorine has been shown to enhance potency of certain drugs (Table 22, Page 5839).
‘647 and Meanwell are considered analogous to the claimed invention as all are involved in the development of drugs and therapeutic agents. Therefore, it would have been prima facie obvious to one of ordinary skill in the art the time of the effective filing date of the instant application to modify the compounds of ‘647 through the fluorination of the alkyl chain present at the R5 position (analogous to variable R6 of the examined application) to arrive at the compounds and methods which are claimed. As Meanwell teaches, fluorination is a common technique utilized in the pharmaceutical arts used to enhance both the potency and metabolic stability of compounds, and the artisan would recognize this, and by fluorinating this alkyl chain, would predictably arrive at compounds which have similar properties as those of ‘647. The fluorination of the alkyl chain of the compounds of ‘647 is prima facie obvious use of a known technique to improve similar products in the same way (See MPEP § 2143 I (C)); the compounds of ‘647 are sGC activators similar to those of the examined application, and fluorination is a common technique is drug development to enhance potency and metabolic stability of compounds, and performing this would predictably result in an sGC with enhanced potency or metabolic stability.
This is a provisional nonstatutory double patenting rejection.
Claims 1-4, 6, and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 9-11 of copending Application No. 18/256,650 (‘650) (Amended claims of 23 April 2026) in view of Meanwell (J. Med. Chem., 2018, 61, 5822-5880).
Claim 1 of ‘650 is directed to a compound of formula (I)
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wherein R1 represents hydrogen or halogen, R2 represents hydrogen or halogen, R3 represents chloro or trifluoromethyl, R4 represents hydrogen or C1-C4 alkyl, R5 represents a group of the formula
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, R6 represents C1-C6 alkyl, substituted by one or more substituent independently selected from trifluoromethoxy, nitril, amido, C2-C6 halogenoalkyl, substituted by 1 to 5 fluoro substituents, C3-C6 cycloalkyl, C3-C6 cycloalkyl-methyl, optionally substituted by 1 to 5 fluoro substituents or a trifluoromethyl group, C1-C6 alkylcarbonyl, optionally substituted by 1 to 3 fluoro substituents, C3-C6 cycloalkyl-carbonyl, optionally substituted with 1 to 3 fluoro substituents, oxetanyl, spiro[2.2]pentan-2-ylmethyl or [(3-fluoro-1-bicyclo[1.1.1.]pentanyl)methyl, R7 represents C1-C4 alkylcarbonyl, optionally substituted by C3-C6 cycloalkyl group, R8 represents C2-C4 halogenoalkyl substituted by 1 to 6 fluoro substituents, X1 and X2 represent nitrogen or carbon. Claim 2 is directed to a compound according to claim 1 wherein R1 and R2 are hydrogen or fluorine, R3 is chloro or trifluoromethyl, R4 is hydrogen or methyl, R5 represents a group
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, R6 is C1-C4 alkyl substituted by one or more substituent selected from trifluoromethoxy and nitril, C2-C6 halogenoalkyl substituted by 1 to 5 fluoro substituents, C3-C6 cycloalkyl-methyl optionally substituted by 1 to 2 fluoro substituents or a trifluoromethyl group, C1-C3 alkyl carbonyl optionally substituted by 1 to 3 fluoro substituents, C3-C6 cycloalkyl carbonyl, R7 is C1-C3 alkyl carbonyl optionally substituted by cyclopropyl, R8 is C2-C4 halogenoalkyl optionally substituted by 1 to 3 fluoro substituents, X1 and X2 are nitrogen or carbon. Claim 3 claims the compound according to claim 1 wherein R1 and R2 are hydrogen, R3 is chloro, R4 is hydrogen, R5 is a group of the formula
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R6 represents C1-C4 alkyl substituted by trifluoromethoxy or nitril, C2-C3 halogenoalkyl substituted by 1 to 5 fluoro substituents, C3-C4 cycloalkyl-methyl optionally substituted by 1 to 2 fluoro substituents or a trifluoromethyl group, C1-C3 alkylcarbonyl optionally substituted by 1 to 3 fluoro substituents, cyclopropyl carbonyl, R7 is C1-C3 alkyl carbonyl optionally substituted by cyclopropyl, and X1 and X2 are carbon. Claim 4 claims a process for preparing a compound according to formula (I) of claim 1 wherein in a first step [B] the compounds of the formula (III)
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in which R1, R2, and R3 are as previously defined, are reacted with compounds of the formula (IV)
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in which R4, R5, X1, and X2 are as defined previously, and in which R9 represents hydrogen, methyl, or both R9 form via the adjacent oxygen atoms a 4,4,5,5,-tetramethyl-1,3,2-dioxaborolane in the presence of a palladium source, a suitable ligand and base to provide compounds of the formula (II)
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and in a second step [A], compounds of formula (II) are reacted with a base to provide compounds of the formula (I), optionally transferred to a third step to form the corresponding salts of the formula (1a) in the presence of a suitable acid in a suitable solvent Claim 9 claims a medicament comprising the compound according to claim 1 in combination with an inert, nontoxic pharmaceutically suitable excipient. Claim 10 is directed to a method for the treatment and/or prophylaxis of heart failure, hypertension, chronic and diabetic kidney disease, pulmonary hypertension, systemic sclerosis, sickle cell disease, neurodegenerative diseases and dementias, and diabetic foot ulcer comprising administering a therapeutically effective amount of the medicament of claim 9 to a human or animal in need thereof. Claim 11 claims a method for the treatment and/or prophylaxis of heart failure, hypertension, chronic and diabetic kidney disease, pulmonary hypertension, systemic sclerosis, sickle cell disease, neurodegenerative diseases and dementias, and diabetic foot ulcer comprising administering a therapeutically effective amount of at least one compound according to Claim 1 to a human or animal in need thereof.
The compounds of ‘650 differ from those of the examined application by the presence of a difluoromethyl (CF2) group on the pyrazole ring rather than a trifluoromethyl (CF3) group of the examined application.
Meanwell, as previously described, teaches the use of fluorination in drug development as a means of increasing potency and enhancing the metabolic stability of therapeutic compounds.
‘650 and Meanwell are considered analogous to the claimed invention as all are involved in the development of drugs and therapeutic agents. Therefore, it would have been prima facie obvious to one of ordinary skill in the art the time of the effective filing date of the instant application to modify the compounds of ‘650 through addition of a third fluorine to the CF2 moiety on the pyrazole ring to form a CF3 to arrive at the compounds and methods which are claimed. As Meanwell teaches, fluorination is a common technique utilized in the pharmaceutical arts used to enhance both the potency and metabolic stability of compounds, and the artisan would recognize this, and by adding a single fluorine to this moiety, would predictably arrive at compounds which have similar properties as those of ‘650. The fluorination of the moiety of ‘650 is prima facie obvious use of a known technique to improve similar products in the same way (See MPEP § 2143 I (C)); the compounds of ‘650 are sGC activators similar to those of the examined application, and fluorination is a common technique is drug development to enhance potency and metabolic stability of compounds, and performing this would predictably result in an sGC with enhanced potency or metabolic stability.
This is a provisional nonstatutory double patenting rejection.
Claims 1-4, 6, and 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,595,247 (Patent Date: 7 April 2026) (‘247) in view of Meanwell (J. Med. Chem., 2018, 61, 5822-5880). (This rejection was previously a provisional rejection over co-pending application 17/667,410, which was granted a patent in the time between the non-final office action and this response.)
Claim 1 of ‘247 is directed to a process for preparing a compound of Formula (I), characterized in that a first step [D] compounds of formula (VIII)
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in which R1 and R2 are hydrogen or halogen, R2 represents hydrogen or halogen, and R3 represents chloro or trifluoromethyl, are reacted with compounds of formula (VII)
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in which R4 is hydrogen or C1-C4 alkyl, R5 represents C1-C6 alkyl, R9 represents hydrogen, methyl, or both R9 groups combine to form via the adjacent oxygen atoms a 4,4,5,5-tetramethyl-1,3,2-dioxaborolan, X1 and X2 represent nitrogen or carbon, in the presence of a palladium source, a suitable ligand, and a base to provide compounds of formula (II)
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and in a second step [A] compounds of formula (II) are reacted with a base in a suitable solvent to provide compounds of formula (I)
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and optionally the compounds of formula (I) are transferred to a third step [A]* into the corresponding salts of formula (Ia) in the presence of a suitable acid in a suitable solvent. Claim 2 is directed to a compound of formula (I)
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in which R1 and R2 represents hydrogen or halogen, R3 represents chloro or trifluoromethyl, R4 represents hydrogen or C1-C4 alkyl, R5 represents C1-C6 alkyl, and X1 and X2 represent nitrogen or carbon, for use in the treatment and/or prophylaxis of disease. Claim 3 claims the compound of formula (I) as previously described for use in the treatment and/or prophylaxis of heart failure, hypertension, chronic and diabetic kidney disease, pulmonary hypertension, systemic sclerosis, sickle cell disease, neurodegenerative diseases and dementias, or diabetic foot ulcer. Claim 4 claims a composition for use as a medication for the treatment and/or prophylaxis of disease comprising a compound according to formula (I) as previously described. Claim 5 claims a composition for use as a medication for the treatment and/or prophylaxis of disease comprising a compound according to formula (I) as previously described, wherein the disease is selected from the group consisting of heart failure, hypertension, chronic and diabetic kidney disease, pulmonary hypertension, systemic sclerosis, sickle cell disease, neurodegenerative diseases and dementias, and diabetic foot ulcer. Claim 6 claims a medicament containing a compound of formula (I) as in claim 9 for use in the treatment and/or prophylaxis of heart failure, hypertension, chronic and diabetic kidney disease, pulmonary hypertension, systemic sclerosis, sickle cell disease, neurodegenerative disease and dementias, or diabetic foot ulcer.
The compounds of ‘247 and those of the examined application differ by the presence of CF2 on the pyrazole moiety rather than CF3, and the fluorination of the alkyl chains of variable R5 (analogous to variable R6 of the examined application).
Meanwell, as previously described, teaches the use of fluorination in drug development as a means of increasing potency and enhancing the metabolic stability of therapeutic compounds.
‘247 and Meanwell are considered analogous to the claimed invention as all are involved in the development of drugs and therapeutic agents. Therefore, it would have been prima facie obvious to one of ordinary skill in the art the time of the effective filing date of the instant application to modify the compounds of ‘247 through addition of a third fluorine to the CF2 moiety on the pyrazole ring to form a CF3, and fluorination of the alkyl chain at the variable R5 position to arrive at the compounds and methods which are claimed. As Meanwell teaches, fluorination is a common technique utilized in the pharmaceutical arts used to enhance both the potency and metabolic stability of compounds, and the artisan would recognize this, and by adding a single fluorine to this moiety and fluorination of the alkyl chain at variable R5, would predictably arrive at compounds which have similar properties as those of ‘247. The fluorination of the compounds of ‘247 is prima facie obvious use of a known technique to improve similar products in the same way (See MPEP § 2143 I (C)); the compounds of ‘247 are sGC activators similar to those of the examined application, and fluorination is a common technique is drug development to enhance potency and metabolic stability of compounds, and performing this would predictably result in an sGC with enhanced potency or metabolic stability.
Claims 1-4, 6, and 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, and 7-10 of U.S. Patent No. 12,195,448 (‘448) in view of Meanwell (J. Med. Chem., 2018, 61, 5822-5880).
Claim 1 of ‘448 is directed to a compound of formula (I)
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wherein R1 and R2 are hydrogen or halogen, R3 is chloro or trifluoromethyl, R4 is hydrogen or C1-C4 alkyl, R5 is C1-C6 alkyl, and X1 and X2 are nitrogen or carbon. Claim 2 claims the compound of claim 1 wherein R1 and R2 are hydrogen or fluorine, R3 is chloro or trifluoromethyl, R4 is hydrogen or methyl, R5 is isobutyl, and X1 and X2 are carbon. Claim 3 claims the compound of claim 1 of the formula
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. Claim 7 claims a process for preparing a compound of formula (I) according to claim 1 comprising in a first step [D] reacting a compound of formula (VIII)
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with a compound of formula (VII)
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wherein R9 represents hydrogen, methyl or both R9 form via the adjacent oxygen atoms a 4,4,5,5-tetramethyl-1,3,2-dioxaborolan in the presence of a pallidum source , a suitable ligand, and a base to provide a compound of the formula (II)
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and in a second step [A] reacting the compound of formula (II) with a base in a suitable solvent to provide a compound of the formula (I), and optionally transferring the compounds of formula (I) in a third step [A]* into the corresponding salts in the presence of a suitable acid in a suitable solvent. Claim 8 claims a method for treatment of a disease or condition comprising administering a therapeutically effective amount of the compound according to claim 1 to a human or animal in need thereof wherein the disease or condition is chronic kidney disease and diabetic kidney disease. Claim 9 claims a medicament comprising the compound according to claim 1 in combination with an inert nontoxic pharmaceutically acceptable excipient. Claim 10 claims a method for treatment of chronic kidney disease and diabetic kidney disease in humans and animals comprising administering a therapeutically effective amount of at least one compound according to claim 1 to a human or animal in need thereof.
The compounds of ‘448 and those of the examined application differ by the presence of CF2 on the pyrazole moiety rather than CF3, and the fluorination of the alkyl chains of variable R5 (analogous to variable R6 of the examined application).
Meanwell, as previously described, teaches the use of fluorination in drug development as a means of increasing potency and enhancing the metabolic stability of therapeutic compounds.
‘448 and Meanwell are considered analogous to the claimed invention as all are involved in the development of drugs and therapeutic agents. Therefore, it would have been prima facie obvious to one of ordinary skill in the art the time of the effective filing date of the instant application to modify the compounds of ‘448 through addition of a third fluorine to the CF2 moiety on the pyrazole ring to form a CF3, and fluorination of the alkyl chain at the variable R5 position to arrive at the compounds and methods which are claimed. As Meanwell teaches, fluorination is a common technique utilized in the pharmaceutical arts used to enhance both the potency and metabolic stability of compounds, and the artisan would recognize this, and by adding a single fluorine to this moiety and fluorination of the alkyl chain at variable R5, would predictably arrive at compounds which have similar properties as those of ‘448. The fluorination of the compounds of ‘448 is prima facie obvious use of a known technique to improve similar products in the same way (See MPEP § 2143 I (C)); the compounds of ‘448 are sGC activators similar to those of the examined application, and fluorination is a common technique is drug development to enhance potency and metabolic stability of compounds, and performing this would predictably result in an sGC with enhanced potency or metabolic stability.
Claims 1-3, 6, and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 15 of copending Application No. 18/893,545 (‘545) (Amended claims of 2 January 2025) in view of Meanwell (J. Med. Chem., 2018, 61, 5822-5880).
Claim 1 of ‘545 claims the use of a compound of formula (I)
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wherein R1 and R2 are hydrogen or halogen, R3 is chloro or trifluoromethyl, R4 is hydrogen or C1-C4 alkyl, R5 is C1-C6 alkyl, and X1 and X2 are nitrogen or carbon, for producing a medicament for use in the treatment and/or prophylaxis of heart failure, hypertension, pulmonary hypertension, systemic sclerosis, sickle cell disease, and diabetic foot ulcer. Claim 15 claims a method for treating a patient suffering from at least one ailment selected from the group consisting of heart failure, hypertension, pulmonary hypertension, systemic sclerosis, sickle cell disease, and diabetic foot ulcer, comprising administering to the patient an effective amount of a compound of formula (I), as described previously.
The compounds of ‘545 and those of the examined application differ by the presence of CF2 on the pyrazole moiety rather than CF3, and the fluorination of the alkyl chains of variable R5 (analogous to variable R6 of the examined application).
Meanwell, as previously described, teaches the use of fluorination in drug development as a means of increasing potency and enhancing the metabolic stability of therapeutic compounds.
‘545 and Meanwell are considered analogous to the claimed invention as all are involved in the development of drugs and therapeutic agents. Therefore, it would have been prima facie obvious to one of ordinary skill in the art the time of the effective filing date of the instant application to modify the compounds of ‘545 through addition of a third fluorine to the CF2 moiety on the pyrazole ring to form a CF3, and fluorination of the alkyl chain at the variable R5 position to arrive at the compounds and methods which are claimed. As Meanwell teaches, fluorination is a common technique utilized in the pharmaceutical arts used to enhance both the potency and metabolic stability of compounds, and the artisan would recognize this, and by adding a single fluorine to this moiety and fluorination of the alkyl chain at variable R5, would predictably arrive at compounds which have similar properties as those of ‘545. The fluorination of the compounds of ‘545 is prima facie obvious use of a known technique to improve similar products in the same way (See MPEP § 2143 I (C)); the compounds of ‘545 are sGC activators similar to those of the examined application, and fluorination is a common technique is drug development to enhance potency and metabolic stability of compounds, and performing this would predictably result in an sGC with enhanced potency or metabolic stability.
This is a provisional nonstatutory double patenting rejection.
Double Patenting- NECESSITATED BY NEW APPLICATION
Claim 1-4, 6, and 8-11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-9, and 12-14 of copending Application No. 19/392,902 (Amended Claims of 4 February 2026) (‘902) in view of Meanwell (J. Med. Chem., 2018, 61, 5822-5880).
Claim 1 of ‘902 is drawn to a compound of the formula (I)
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wherein
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. Claim 2 claims the compound of claim 1 wherein
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. Claim 3 claims the compound
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. Claim 4 claims the compound
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. Claim 7 claims a process for preparing a compound of formula (I) which is identical to that claimed in the examined application. Claim 8 claims a compound of claim 1 for use in the treatment and/or prophylaxis of diseases. Claim 9 claims a compound according to claim for use in the treat and/or prophylaxis of heart failure, hypertension, chronic and diabetic kidney disease, pulmonary hypertension, and other conditions. Claim 12 claims a medicament comprising a compound of claim 1 in combination with an inert, nontoxic pharmaceutically acceptable excipient. Claim 13 claims the medicament of claim 12 for use in the treatment and/or prophylaxis of the same conditions claimed in the examined application. Claim 14 claims a method for the treatment and/or prophylaxis of the same conditions claimed in the examined application using a compound of claim 1.
The compounds of ‘902 and those of the examined application differ by the presence of CF2 on the pyrazole moiety rather than CF3, and the fluorination of the alkyl chains of variable R5 (analogous to variable R6 of the examined application).
Meanwell, as previously described, teaches the use of fluorination in drug development as a means of increasing potency and enhancing the metabolic stability of therapeutic compounds.
‘902 and Meanwell are considered analogous to the claimed invention as all are involved in the development of drugs and therapeutic agents. Therefore, it would have been prima facie obvious to one of ordinary skill in the art the time of the effective filing date of the instant application to modify the compounds of ‘902 through addition of a third fluorine to the CF2 moiety on the pyrazole ring to form a CF3, and fluorination of the alkyl chain at the variable R5 position to arrive at the compounds and methods which are claimed. As Meanwell teaches, fluorination is a common technique utilized in the pharmaceutical arts used to enhance both the potency and metabolic stability of compounds, and the artisan would recognize this, and by adding a single fluorine to this moiety and fluorination of the alkyl chain at variable R5, would predictably arrive at compounds which have similar properties as those of ‘902. The fluorination of the compounds of ‘902 is prima facie obvious use of a known technique to improve similar products in the same way (See MPEP § 2143 I (C)); the compounds of ‘902 are sGC activators similar to those of the examined application, and fluorination is a common technique is drug development to enhance potency and metabolic stability of compounds, and performing this would predictably result in an sGC with enhanced potency or metabolic stability.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Claims 1-4, 6, and 8-11 are rejected.
THIS ACTION IS MADE FINAL. 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 PHILLIP MATTHEW RZECZYCKI whose telephone number is (703)756-5326. The examiner can normally be reached Monday Thru Friday 730AM-5PM EST.
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 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/P.M.R./Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
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