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 of Group I, drawn to a compound of formula (A-I) or tautomer thereof, isotope thereof, prodrug thereof, N-oxide thereof, a pharmaceutically acceptable ester thereof, a pharmaceutically acceptable salt thereof, or a stereoisomer thereof; and 1-(4-acryloyl-3-(cyanomethyl)piperazin-1-yl)-6-(8-chloronaphthalen-1-yl)-3-(((S)-1-methylpyrrolidin-2-yl)methoxy)-5,6,7,8-tetrahydro-2,6-naphthyridine-4-carbonitrile (see Example 23 of the specification) as the elected compound species of Formula (A-I) are maintained.
Please note the chemical structure of the elected compound species of Formula (A-I), when reasonably construed in light of page 35, table 1, Ex. 23 of the specification, is a compound having the structure of:
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.
Status of the Claims
Acknowledgement is made of the receipt and entry of the amendment to the claims filed on April 12, 2026, wherein claims 1-29, 31, 34-35, 37-39, 43-53 and 55-66 are cancelled; claims 30, 33, 36, 40, 41 and 54 are amended; and claims 32, 42 and 67 are unchanged.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 30, 32-33, 36, 40-42, 54 and 67 are pending.
Claims 30, 32-33, 36, 40-42, 54 and 67 are under examination in accordance with the elected species.
Priority
The instant application 18/260,928 filed on July 10, 2023 is a 371 of PCT/IB2022/059630 filed
on October 7, 2022, which claims priority to, and the benefits of U.S. Provisional Application No.
63/308,727 filed on February 10, 2022; and Foreign Application No. IN202141046053 filed on October 8, 2021.
Action Summary
Applicant’s amendment to the claims overcome each and every objection previously sets
forth in the Non-Final Office Action mailed on January 8, 2026 unless otherwise noted.
Claim 2, 11-13, 15-17, 19, 22, 27, 30, 32-33, 36, 40-42 and 54 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement are withdrawn in light of the claim amendments.
Claims 2 and 16 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 are withdrawn in light of the claim amendments. These claims have been cancelled.
Claim 2 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements are withdrawn in light of the claim amendments. Said claim has been cancelled.
Claims 2, 11-13, 15-17, 19, 22, 27, 30, 32-33, 36, 40-42 and 54 rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives are maintained, but revisited and modified in light of the claim amendments.
Claims 2, 11-13, 15-17, 19, 22, 27, 30, 32-33, 36, 40-42, 54 and 67 are rejected under 35 U.S.C. 103 as being unpatentable over Tian et al. (WO 2021/219072 A1; cited in the previous Office Action mailed on October 1, 2025) are maintained, but revisited and modified in light of the claim amendments.
Claims 2, 11-13, 15-16, 22, 27, 30, 32 and 54 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 7, 9, 14, 16, 19, 24, 27, 29-30, 33, 36 and 38-39 of copending Application No. 18/716,825 (reference application) are withdrawn in light of the claim amendments that added the electrophile moieties in the definition of Variable E (i.e., “
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… and
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).
Claim Objections
The amendment to the claims filed on April 12, 2026 is object to under 37 CFR.1.121(c). Claim 30 has been amended from dependent (“[t]he compound of claim 2”) to an independent claim (“[a] compound of formula (A-III)”, and amended to include additional electrophile moieties (i.e., “
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… and
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) in the definition of Variable E. Additionally, the amendment changes the dependency of claim 41 from claim 2 to claim 30, i.e., from the recitation of “[t]he compound of claim 2” to the recitation of “[t]he compound of claim 30. However, the added subject matter was not properly indicated by underlining and the deleted matter was not indicated by strike-through as required by 37 CFR 1.121(c)(2). Applicant is required to submit a compliant amendment clearly identifying all additions and deletions to the claim(s). See MPEP 714 and 37 CFR 1.121 with respect to Manner of making amendments in application.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 41 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 (newly applied as necessitated by amendment).
Regarding amended claim 41, “6-(1-naphthoyl)-1-(4-acryloyl-3-(cyanomethyl)piperazin-1-yl)-3-(4-methylpiperazin-1-yl)-5,6,7,8-tetrahydro-2, 6-naphthyridine-4-carbonitrile” fails to further limit the compound of formula (A-III) set forth in claim 30. Specifically, the A1 of said compound is not “absent or substituted or unsubstituted alkyl”.
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.
Claims 30, 32-33, 36, 40-42 and 54 remain rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature.
A Markush claim contains an “improper Markush grouping” if: (1) The species of the Markush group do not share a single structural similarity,” or (2) the species do not share a common use. Members of a Markush group share a "single structural similarity” when they belong to the same recognized physical or chemical class or to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the specification or known in the art to be functionally equivalent (see Federal Register, Vol. 76, No. 27, Wednesday, February 9, 2011, p. 7166, left and middle columns, bridging paragraph).
The members of the improper Markush grouping do not share a substantial feature for the following reasons:
Amended claim 30 recites “[a] compound of formula (A-III)
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or a tautomer thereof, isotope thereof, prodrug thereof, N-oxide thereof, a pharmaceutically acceptable ester thereof, a pharmaceutically acceptable salt thereof, or a stereoisomer thereof”. The Markush groupings of these compound species alternatives of Formula (A-III) is improper, because the alternatives defined by the Markush grouping do not share a substantial structural feature and a common use of inhibiting KRAS protein that flows from the substantial structural feature. In the instant case, the moiety circled as follows:
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is the only portion of the formula (A-III) that each compound species shares in common. According to Cao et al. (WO 2012/171506 A1; cited in the previous Office Action), compound 492 having the structure of:
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(see e.g., p. 80, Table 4, compound# 492) is an exemplary compound of formula (I) useful for inhibiting IDH1 mutants (see e.g., abstract). The compound 492 of Cao et al. shares the same common structure feature noted above, but said compound is taught to have different use; therefore, it is not apparent that the structure feature circled as follows:
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is a substantial structure feature that constituted to the common use of inhibiting KRAS protein.
Furthermore, the Cy1 of Formula (A-I) includes, inter alia, any substituted heteroaryl, such as quinazoline
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. According to Becker et al. (WO 02/053558 A1), the compound of Example 11 having the structure of:
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(see e.g., p. 67, Example 11) is an exemplary compound of formula (I) useful as alpha-1A/B adrenoceptor antagonist that may be depicted as different tautomer form having the structure of:
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(see e.g., p. 11, line 25 to p. 12, line 3; abstract). According to Kelly et al. (WO 2005/066171 A1), the compound of Example 26 having the structure of:
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(see e.g., p. 95, Example 26) is an exemplary compound of formula (I) useful for modifying ion channels (see e.g., [0020]). Each of these cited references further demonstrate the compound containing the alternatives of Cy1 do not share the same common use of inhibiting KRAS protein.
In view of the foregoing, not all members recited in the Markush grouping share a substantial structural feature and a common use that flows from the substantial structural feature.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1) (emphasis provided).
Response to Arguments
Applicant's arguments filed on April 4, 2026 with respect to the rejection of claims 2, 11-13, 15-17, 19, 22, 27, 30, 32-33, 36, 40-42 and 54 on the judicially-created basis that it contains an improper Markush grouping of alternatives have been fully considered but they are not persuasive.
Applicant cancelled claims 2, 11-13, 15-17, 19, 22 and 27. Applicant further amends claim 30 by changing it to an independent form (specifically, from the recitation of “[t]he compound of claim 2, having a compound of formula (A-III)” to the recitation of “[a] compound of formula (A-III)”) and added the limitation of “the group consisting of
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” to variable E. Each of these findings demonstrate the amendment to the claim(s) changes the scope of the claims, and that necessities a modification of the rejection on the record.
In Summary, Applicant argues the claimed compounds do share a "substantial" structure feature as they include (i) a 5,6,7,8-tetrahydro-2,6-naphthyridine-4-carbonitrile bicyclic core, (ii) a cyclic group at the 1-position of the bicyclic core, and (ii) a Cy1-A1 group at the 6-position, where Cy1 is aryl or heteroaryl and A1 is absent or substituted or unsubstituted alkyl; and they are inhibitors of the KRAS protein by directing attention to Test 1 on paragraph 523 and Table 4 of US 2024/0300942, and argues said reference demonstrates the claimed compound has activity in MIAPACA-2 cell lines, which are known to have a KRAS mutations.
In response, applicant’s argument is not found persuasive for the reasons set forth herein:
It is respectfully noted that the reference “US 2024/0300942” upon which applicant relies is the Pre-Grant Publication of instant application; and paragraph 523 and Table 4 cited by Applicant is corresponding to paragraph [339] and Table 4 of the instant specification filed on July 10, 2023.
First of all, applicant’s assertion that the alternated compound species embraced by instant claim 30 share a "substantial" structure feature and a common use that flows from the substantial structure feature is not found persuasive, because the structure these alternated compound species have in common
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does not represent a significant portion of the compound of Formula (A-III) as a whole. There is an insufficient disclosure to provide adequate basis for concluding that the unexemplified compound species having the structure represented by the claimed formula (A-III) can inhibit KRAS proteins. In the instant case, the disclosure fails to exemplify the compound species of instant Formula (A-III), wherein
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is
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or
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; A1 is substituted alkyl; and Cy1 is
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,
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or
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have the same desired properties of inhibiting KRAS proteins. It is noted that Becker et al. (WO 02/053558 A1) teaches a compound of Example 11 having the structure of:
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(see e.g., p. 67, Example 11) is an exemplary compound of formula (I)
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useful as alpha-1A/B adrenoceptor antagonist that may be depicted as different tautomer form having the structure of:
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(see e.g., p. 11, line 25 to p. 12, line 3; abstract), wherein R2, R3, and R4 are each independently in each occurrence, inter alia, hydrogen, heterocyclyl, or cyano (see e.g., p. 20, line14-18). Even though the compound taught by Becker et al. can include (i) a 5,6,7,8-tetrahydro-2,6-naphthyridine-4-carbonitrile bicyclic core, (ii) a cyclic group at the 1-position of the bicyclic core, and (ii) a Cy1-A1 group at the 6-position, where Cy1 is heteroaryl and A1 is absent, the compound of Becker et al. is taught to have different property, specifically, alpha-1A/B adrenoceptor antagonist activity rather than inhibiting KRAS proteins. Therefore, it is not apparent that the structure feature of “(i) a 5,6,7,8-tetrahydro-2,6-naphthyridine-4-carbonitrile bicyclic core, (ii) a cyclic group at the 1-position of the bicyclic core, and (ii) a Cy1-A1 group at the 6-position, where Cy1 is aryl or heteroaryl and A1 is absent or substituted or unsubstituted alkyl” constitutes a substantial structure feature for the compound of formula (A-III) as a whole for the desired property of inhibiting KRAS proteins.
Additionally, some of the exemplified compounds of Formula (A-III) are tested against NCI-H358 and MIAPACA-2 cell lines to evaluate percent inhibition of cell proliferation in Table 4. According to Table 4, Example 44 (i.e.,
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) tested at 10 μM has a percent inhibition of ≤25% (“A”) and Example 57 (i.e.,
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) tested at 10 μM has a percent inhibition of > 75 % to 100 % (“D”) against the same H358 cell line. It is noted that Table 4 does not disclose the exact percent inhibition for each compound, and some of their activities are not disclosed (e.g., Ex 1 at 3 μM against MiaPaca is “-“). If Example 44 has a percent inhibition at 1%, and Example 57 has a percent inhibition at 100%, then there is roughly a 100 fold difference for the percent inhibition against NCI-H358 cell lines. Therefore, in light of Table 4 of the specification, it is not apparent that the structure of “(i) a 5,6,7,8-tetrahydro-2,6-naphthyridine-4-carbonitrile bicyclic core, (ii) a cyclic group at the 1-position of the bicyclic core, and (ii) a Cy1-A1 group at the 6-position, where Cy1 is aryl or heteroaryl and A1 is absent or substituted or unsubstituted alkyl” alone constitutes a significant structure elements that is essential for the compound as a whole to give the same desired property of inhibiting KRAS proteins in each and every cell lines.
Therefore, in view of the foregoing, the rejection on the record has been maintained, but revisited and modified in light of the claim amendments.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 30, 32-33, 36, 40-42, 54 and 67 remain rejected under 35 U.S.C. 103 as being unpatentable over Tian et al. (WO 2021/219072 A1; cited in the previous Office Action mailed on October 1, 2025).
Please note Tian et al. is written in Chinese and a machine translation has been provided in the previous Office Action mailed on October 1, 2025, any reference hereinafter to column and lines will be based upon the machine translation. Such reference should be interpreted as corresponding to the disclosure of the WO publication.
Tian et al. teaches a compound having the structure of:
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is an exemplary compound of Formula (I) capable of modulating G12C mutant KRAS, HRAS and/or NRAS proteins (see e.g., p. 18, 1st row, 4th column; p. 45, “Summary of the invention”, 1st paragraph). Tian et al. further teaches the compound of Formula (I)
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, wherein M is N or CR12; R12 is, inter alia, halogen or cyano (see e.g., p. 45, “Summary of the invention” section); Ring W is
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, wherein the piperazine ring is optionally additionally substituted with one or more R4; In some embodiments, R4 is C1-C3 alkyl, wherein the alkyl is unsubstituted or substituted with cyano (see e.g., p. 51, line 6-8). Tian et al. further teaches a pharmaceutical composition comprises anyone (or more) of the aforementioned compounds and a pharmaceutically acceptable carrier (see e.g., p. 14, 2nd last paragraph). Tian et al. further teaches the present invention is intended to include all such possible isomers, as well as their racemic and optically pure forms (see e.g., p. 143, 5th paragraph).
In the instant case, the difference between the compound of Tian et al. sets forth above and the claimed compound is that the prior art teaches iodine substituted at the tetrahydronaphthyridine ring rather than cyano, and the position of acetonitrile attached to the piperazine ring shown below (see shaded):
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.
It would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to select the compound of Tian et al. having the structure of:
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, and then modify said compound by substituting the iodine at the tetrahydronaphthyridine ring with cyano, and then changes the position of acetonitrile from
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to
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to arrive at the claimed compound. One would have been motivated to do so, because Tian et al. teaches a list of R12, including halogen and cyano, that can be interchanged to arrive CR12 at the M position of Formula (I); and further teaches Ring W can be substituted with R4, including acetonitrile, at any position of the piperazine ring to arrive at a compound of Formula (I) useful for modulating G12C mutant KRAS, HRAS and/or NRAS proteins. One would have a reasonable expectation of success to arrive at the claimed invention, because one would have reasonably expected that by modified compound of Tian et al. would have successfully modulate G12C mutant KRAS, HRAS and/or NRAS proteins; thus, said modified compound can successfully incorporate with a pharmaceutically acceptable carrier to arrive at a pharmaceutical composition without any appreciable loss of activity.
Therefore, the claimed invention is prima facie obvious to one of ordinary skill in the art at the time the application was filed, absent factual evidence to the contrary.
Response to Arguments
Applicant's arguments filed on April 4, 2026 with respect to the rejection of claims 2, 11-13, 15-17, 19, 22, 27, 30, 32-33, 36, 40-42, 54 and 67 under 35 U.S.C. 103 as being unpatentable over Tian et al. (WO 2021/219072 A1; cited in the previous Office Action mailed on October 1, 2025) have been fully considered but they are not persuasive.
In Summary, Applicant argue there is no synthesis or data provided for the cited compound of Tian et al. Applicant further argues activity data is only provided for select compounds at pages 228 to 238 of Tian et al., thus, one of ordinary skill in the art would have select one of the compounds for which activity data is provided rather than a random compound disclosed by the prior art. Applicant further argues the definition of the variable R12 includes a long list of possible substituents, and simply being within a genus cannot be used to provide motivation to alter a compound; Tain et al. fails to provide any motivation to include a cyano group at the 4-position of the 5,6,7,8-tetrahydro-2,6-naphthyridinyl group; and the majority of the exemplified compounds has nitrogen atom at M of Formula (I) of Tian et al.
In response, applicant’s argument is not found persuasive for the reasons set forth below:
First, according to MPEP 2123, II “[d]isclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). ‘A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.’ In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). In other words, just because Tian et al. did not expressly test the biological activity of the cited compound, i.e.,
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, in the working examples, it does not mean said compound is excluded from the compound of Formula (I). In fact, Tian et al. clearly teaches said compound in the preferred embodiment, specifically in claim 23, said compound is being taught as the preferred species of compound of formula (I) that is capable of modulating G12C mutant KRAS, HRAS and/or NRAS proteins (see e.g., p. 18, 1st row, 4th column; p. 45, “Summary of the invention”, 1st paragraph; claim 23); and that clearly provides a reasonable basis for one of ordinary skill in the art to select the cited compound.
In addition, according to MPEP 2141.02, VI, “[a] prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)” and “’the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….’ In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See also MPEP § 2123.”. In the instant case, the mere fact that Tian et al. does not exemplified a compound species of Formula (I) with cyano at R12, and teaches other alternatives for R12 on page 45, 2nd last paragraph: “R11 and R12 are each independently hydrogen, halogen, cyano, nitro, alkyl, alkenyl, alkynyl, cycloalkyl, aryl, heteroaryl or heterocyclyl, -ORd , -C(O)Rd, -CO2Rd , -CONRd”, it does not constitute a teaching away from substituting iodine, which is a halogen, of the cited compound of Tian et al. (i.e., see shaded:
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) with cyano (-CN) at R12 to arrive at a compound of formula (I) of Tian et al. In fact, Tian et al. clearly teaches a list of alternated R12 , including halogen and cyano, that is contemplate for use to form a compound of formula (I) with the property of modulating G12C mutant KRAS, HRAS and/or NRAS proteins. In addition, the rejection on the record uses the compound of Tian et al. having the structure of:
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as the basis rather than a compound species having a nitrogen atom at M of Formula (I) of Tian et al.
Therefore, given these reasons above, the rejection on the record has been maintained for the same reasons of record and for the reasons set forth herein.
Conclusion
No claims are 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 Chihyi Lee whose telephone number is (571)270-0663. The examiner can normally be reached Monday - Friday 8:30 am - 5:00 pm EST.
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/CHIHYI LEE/Examiner, Art Unit 1628 /JEAN P CORNET/Primary Examiner, Art Unit 1628