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 .
Status of the Claims
Claim 1 is pending, claims 2-11 are canceled, in the amendment filed 4/3/26.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/3/26 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Response to Amendment / Arguments
Applicant's arguments filed 4/3/26 have been fully considered but they are not persuasive. Applicant’s arguments can be summarized in that the assertion is that to arrive at the instant compound of claim 1, it would require picking and choosing from a myriad of variables to define each moiety from a large genus of possibilities and that the examiner mischaracterizes the compounds of table two, asserting it is generic structures with numerous substituent permutations. Respectfully, the reference provides direct teachings of the compound, and it is not picking and choosing, but selection of a single combination/pairing of variables Ra and Rb-1 for any of the depicted products from the table of products Table 2, spanning pages 59-67). As set forth below, the reference provides a reaction scheme, which is generic, using compound 2-12 to form compound 9, via reaction with compound 2-2 (Process K, scheme page 48, para [0152]). The final products of those reactions are in Table 2. The starting material is 2-12, and the starting material reacts with compound 2-2 to replace hydrogen of the ring N-H with compound 2-2. As in the final product, R3, R4, Ra, and R7 remain the same through the process. Thus, in making compounds such as
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, one would look to Table 2 for the pairings of what define Ra and Rb-1 from a finite number of combinations, and not random selections based on “picking and choosing” of Ra and Rb-1. The compound depicted in the reaction scheme has two positions that require selection, and the table in Table 2 provides for specific pairings of the two variables, and not a random list of pick one from Ra and one from Rb-1 without any guidance. Further to this point, Numata explicitly teaches that that Table 2 is a list of compounds, and not a Markush group, stating specifically, “As specific active compounds covered by the present invention, for example, those shown in Tables 2 and 3 may be mentioned…” (page 55, para [0194]). One cannot infer anything other than Numata envisioned each and every compound listed in Table 2. Thus, it is not “picking and choosing” of variables, but rather a direct teaching of the compound, and the starting material identified is the same as the instantly claimed compound. As such, Applicant’s arguments are not persuasive. In light of this interpretation of the art, a new ground of rejection is set forth below and the obviousness rejection of record is maintained, but modified, below.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by NUMATA (EP 2674423 A1, IDS 9/15/23).
The instant claim is drawn to the compound
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.
Numata teaches generically the synthesis:
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(page 48, para [0151]) and, for reference, the instantly claimed compound falls within the structure of starting material 2-12.
In looking to Numata for the compounds prepared by this process, one looks to Table 2 (page 58+) for compounds of formula 9, and finds the compounds:
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. It is noted that the corresponding starting material (2-12) for each of these compounds is
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, and compound 2-2 would define what reactant is used to make the final product, e.g.
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. Further, Numata teaches, “As specific active compounds covered by the present invention, for example, those shown in Tables 2 and 3 may be mentioned…” (page 55, para [0194]). In looking to the remainder of Table 2, for the definitions of the Ra and Rb-1 pairings, we find the species where Ra is H and Rb-1 is CH(Me)S(O)2Me (page 68, line 15), thus taken together, Table 2 provides the final product, compound 9, such as
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, where Ra is H and Rb-1 is CH(Me)S(O)2Me, which necessarily provides for the compound
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as the starting material, and thus the compound
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is anticipated.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over NUMATA (EP 2674423 A1, IDS 9/15/23), above.
The instant claims and teaching of Numata are presented above. The following rejection is set forth in the interpretation that the compound is selected from a list of variables, and not explicitly taught.
As above, Numata teaches generically the synthesis:
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(page 48, para [0151]) and provides a detailed roadmap to produce the specific compounds of Table 2.
In looking to Numata for the compounds prepared by this process, one looks to Table 2 (page 58+) for compounds of formula 9, and finds the compounds:
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. It is noted that the corresponding starting material (2-12) for each of these compounds would necessarily be the compound
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, and compound 2-2 would define what reactant is used to make the final product, e.g.
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. In looking to the remainder of Table 2, for the definitions of the Ra and Rb-1 pairings, we find the species where Ra is H and Rb-1 is CH(Me)S(O)2Me (page 68, line 15), thus taken together, Table 2 provides the final product, compound 9, such as
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, where Ra is H and Rb-1 is CH(Me)S(O)2Me, which necessarily provides for the compound
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as the starting material. Further, Numata teaches, “As specific active compounds covered by the present invention, for example, those shown in Tables 2 and 3 may be mentioned…” (page 55, para [0194]).
It would have been obvious to have selected any of the specifically enumerated compounds in Table 2, including the compounds:
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, and have selected the variables for Ra and Rb-1, including where Ra is H and Rb-1 is CH(Me)S(O)2Me, from the finite list of pairings, resulting in a predictable final product, and additionally the predictable, and necessary, starting material compound 2-12 having the structure
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. Further, Numata provides explicit instruction on forming the compound in the reaction scheme, and explicit instructions on which variables to choose, as Table 2 defines very specific compounds where parings of Ra and Rb-1 are enumerated and the core structure to which they are attached are specifically defined.
Additionally, Numata provides the expectation for a predictable outcome (the final product being a compound within Table 2 synthesized by the reaction scheme) and therefore sets forth a predictable starting material,
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. Numata additionally provides the synthesis of the compounds 2-12
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(para [0184]). Furthermore, contrary to applicant’s assertions, Table 2 is not a Markush group of variables that are randomly selected, but rather a tabular arrangement of the combinations contemplated by Numata, and as such provides the roadmap for which combinations to choose- it is pick a combination A and B, not pick one from A and one from B. The PHOSITA would have selected any of the listed combinations for Ra and Rb-1 for any of the enumerated core structures in Table 2, including the one corresponding to compounds such as
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, and recognized that the starting material required for the reaction is
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, and that in looking to the enumerated options of Numata, one would find a reasonable expectation for success in making the compound
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, because it is the necessary material to form products
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where Ra is H and Rb-1 is CH(Me)S(O)2Me, as set forth in Table 2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew D Kosar whose telephone number is (571)272-0913. The examiner can normally be reached Monday-Friday, 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Michener can be reached at 571-272-1600. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew D Kosar/ Supervisory Patent Examiner, Art Unit 1625
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