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 with traverse of Group I, drawn to a compound of formula I or a pharmaceutically acceptable salt thereof; and a compound 6-j having the structure of:
PNG
media_image1.png
59
61
media_image1.png
Greyscale
in the reply filed on December 30, 2025 is acknowledged. The traversal is on the ground(s) that ring A of Formula I is not taught by Moslin et al. and said reference teaches a number of options for R2 and R3a in the general formula that would not lead to a person of ordinary skill in the art to easily obtained the compounds of instant formula I. This is not found persuasive because the cited reference clearly teaches the compound species can be modified in view of formula (I), includes substituting C1-6 alkyl with –(CH2)r-5-7 membered heterocycle at Ra, and that is a ring A of formula I instantly claimed (see page 5, line 8-10; page 6, line 5-6 of the previous Office Action mailed on November 6, 2025).
The requirement is still deemed proper and is therefore made FINAL.
Claims 3, 5 and 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 30, 2025.
Expansion of Election of Species Requirement
A reasonable and comprehensive search of the elected species conducted by the Examiner
discover a prior art by Liu et al. that anticipates and renders obvious the claimed invention. Specifically, the prior art teaches compounds of Example 55 and Example 58, which are compounds of Formula I instantly claimed. In light of this discovery, the search is expanded to the subject matter of the subgenus of the elected compound species, i.e., the compounds of formula (I) having the structure of:
PNG
media_image2.png
9
13
media_image2.png
Greyscale
,
PNG
media_image3.png
60
54
media_image3.png
Greyscale
and
PNG
media_image4.png
50
61
media_image4.png
Greyscale
, in addition to the elected compound species (compound 6-j), such that it does not encompass the full scope of the claims.
Status of the Claims
Claims 1-18 are pending. Claims 3, 5 and 17-18 are withdrawn.
Claims 1-2, 4 and 6-16 are under examination in accordance with the elected invention and species along with the expanded compound species sets forth in the Expansion of Election of Species Requirement section above.
Priority
The instant application 18/263,293 filed on July 27, 2023 is a 371 of PCT/CN2022/075145 filed
on January 30, 2022, which claims priority to, and the benefits of Foreign Application No.
CN202110165856.4 filed on February 6, 2021, Foreign Application No.
CN202110935764.X filed on August 16, 2021, Foreign Application No. CN202111063960.9 filed on September 10, 2021, and Foreign Application No. CN202210056272.8 filed on January 18, 2022.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 7/27/2023, 2/27/2025, and 10/27/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 112
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 4 and 6-14rejected 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.
Regarding claims 4 and 6-14, 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,
claim 4 recites the broad recitation “q is selected from the group consisting of 0 and 1”, and the claim also recites “q is 0” which is the narrower statement of the range/limitation.
claim 6 recites the broad recitation “n is selected from the group consisting of 0 and 1”, and the claim also recites “n is 0” which is the narrower statement of the range/limitation.
Claim 7 recites the broad recitation “T1, T2, T3, T4, and Ts are each independently selected from the group consisting of CH and N, two of which are selected from N and three of which are selected from CH”, and the claim also recites the limitation of “
PNG
media_image5.png
221
627
media_image5.png
Greyscale
” which are the narrower statements of the range/limitation. In addition, the claim also recites the broad limitation of “T1, T2, T3, T4, and Ts are each independently selected from the group consisting of CH and N, one of which is selected from N and four of which are selected from CH”, and the limitation of “
PNG
media_image6.png
91
602
media_image6.png
Greyscale
”which are the narrower statements of the range/limitation. Furthermore, the broad limitation of “T1, T2, T3, T4, and T5 are each independently selected from the group consisting of CH and N, three of which are selected from N and two of which are selected from CH;” is followed by the limitation of “T1, T3, and T5 are selected from N, and T2 and T4 are selected from CH;” which is the narrower statement of the range/limitation.
claim 8 recites the broad recitation “ring A is selected from the group consisting of C3-8 cycloalkyl, 3- to 8-membered heterocycloalkyl, 3- to 8-membered heterocycloalkenyl, C6-10 aryl, and 5- to 8-membered heteroaryl”(see line 9-10), and the claim also recites other limitation(s) following the term “alternatively”, which are the narrower statements of the range/limitation (e.g.,
PNG
media_image7.png
64
724
media_image7.png
Greyscale
).
claim 9 recites the broad recitation “m is selected from the group consisting of 0, 1, 2, and 3”, and the claim also recites “m is selected from the group consisting of 0, 1, and 2” which is the narrower statement of the range/limitation.
claim 10 recites the broad recitation “
PNG
media_image8.png
190
704
media_image8.png
Greyscale
” , the claim recites numerous limitation(s) following the term “alternatively”, which are the narrower statements of the range/limitation (e.g.,
PNG
media_image9.png
66
724
media_image9.png
Greyscale
).
claim 11 recites the broad recitation “Ra is independently selected from the group consisting of halogen and cyano”, and the claim also recites numerous limitation(s) following the term “alternatively”, which are the narrower statements of the range/limitation (e.g.,
PNG
media_image10.png
29
361
media_image10.png
Greyscale
)
claim 12 recites the broad recitation of “
PNG
media_image11.png
81
98
media_image11.png
Greyscale
is selected from the group consisting of
PNG
media_image12.png
112
436
media_image12.png
Greyscale
PNG
media_image13.png
222
699
media_image13.png
Greyscale
”, and the claim also recites numerous limitation(s) following the term “alternatively”, which are the narrower statements of the range/limitation.
claim 13 recites the broad recitation of “
PNG
media_image14.png
128
395
media_image14.png
Greyscale
PNG
media_image15.png
142
697
media_image15.png
Greyscale
…”, and the claim also recites numerous limitation(s) following the term “alternatively”, such as the limitation of ”
PNG
media_image16.png
124
498
media_image16.png
Greyscale
PNG
media_image17.png
134
722
media_image17.png
Greyscale
”, which is the narrower statement of the range/limitation.
claim 14 recites the broad recitation of “
PNG
media_image18.png
259
176
media_image18.png
Greyscale
”, and the claim also recites numerous limitation(s) such as “
PNG
media_image19.png
309
572
media_image19.png
Greyscale
” and limitation(s) following the term “alternatively” (e.g., optionally, structural units…is selected from the group consisting of
PNG
media_image20.png
142
103
media_image20.png
Greyscale
PNG
media_image21.png
148
453
media_image21.png
Greyscale
), which are the narrower statements 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 Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4, 6-9, 13-14 and 16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Liu et al. (WO 2021/222153 A1; cited in the IDS filed on 7/27/2023).
Liu et al. teaches a compound of Example 55, 6-(cyclopropanecarboxamido)-4-((2-methoxy-3-(5-(tetrahydrofuran-3-yl) pyrimidin-2-yl) phenyl) amino)-N-(methyl-d3) pyridazine-3-carboxamide, having the structure of:
PNG
media_image2.png
9
13
media_image2.png
Greyscale
(see e.g., p. 73, -line 5). Liu et al. further teaches a pharmaceutical composition comprising one or more compounds, which is, inter alia, 6-(cyclopropanecarboxamido)-4-((2-methoxy-3-(5-(tetrahydrofuran-3-yl) pyrimidin-2-yl) phenyl) amino)-N-(methyl-d3) pyridazine-3-carboxamide, and a pharmaceutically acceptable carrier or diluent (see e.g., claims 7 and 9).
Please note the compound of Example 55 taught by Liu et al. is a compound of formula I instantly claimed:
PNG
media_image22.png
259
161
media_image22.png
Greyscale
, wherein X is N; q is 0; n is 0; T1 and T5 are N; T2, T3, and T4 are CH; ring A is
PNG
media_image2.png
9
13
media_image2.png
Greyscale
(5-membered heterocyclyl); m is 0.
Therefore, the claimed invention is being anticipated by Liu et al.
Claims 1-2, 4, 6-10 and 16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Liu et al. (WO 2021/222153 A1; cited in the IDS filed on 7/27/2023).
Liu et al. teaches a compound of Example 58 having the structure of:
PNG
media_image3.png
60
54
media_image3.png
Greyscale
(see e.g., p. 81, Table 7, Ex #58). Liu et al. further teaches a pharmaceutical composition comprising one or more compounds, which is, inter alia, 6-(cyclopropanecarboxamido)-4-((2-methoxy-3-(5-(4-methylpiperazin-1-yl) pyrazin-2-yl) phenyl) amino)-N-(methyl-d3) pyridazine-3-carboxamide, and a pharmaceutically acceptable carrier or diluent (see e.g., claims 7 and 9).
Please note the compound of Example 58 taught by Liu et al. is a compound of formula I instantly claimed:
PNG
media_image22.png
259
161
media_image22.png
Greyscale
, wherein X is N; q is 0; n is 0; T2 and T5 are N; T1, T3, and T4 are CH; ring A is
PNG
media_image3.png
60
54
media_image3.png
Greyscale
(6-membered heterocyclyl); m is 1; R3 is -CH3 (C1 alkyl).
Therefore, the claimed invention is being anticipated by Liu et al.
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 1-2, 4, 6-9 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (WO 2021/222153 A1; cited in the IDS filed on 7/27/2023).
Liu et al. teaches a compound of Example 55, 6-(cyclopropanecarboxamido)-4-((2-methoxy-3-(5-(tetrahydrofuran-3-yl) pyrimidin-2-yl) phenyl) amino)-N-(methyl-d3) pyridazine-3-carboxamide, having the structure of:
PNG
media_image2.png
9
13
media_image2.png
Greyscale
is an exemplary compound of formula I useful in the modulation of IL-12, IL-23 and/or IFN[Symbol font/0x61] (see e.g., p. 73, -line 5). Liu et al. further teaches a pharmaceutical composition comprising one or more compounds, which is, inter alia, 6-(cyclopropanecarboxamido)-4-((2-methoxy-3-(5-(tetrahydrofuran-3-yl) pyrimidin-2-yl) phenyl) amino)-N-(methyl-d3) pyridazine-3-carboxamide, and a pharmaceutically acceptable carrier or diluent (see e.g., claims 7 and 9). Liu et al. further teaches a compound of formula I
PNG
media_image23.png
185
184
media_image23.png
Greyscale
, wherein R3 is a 5-14 membered mono or bicyclic heterocycle containing 1-4 heteroatoms selected from N, O, and S, each group substituted with 0-4 R3a; R3a is independently at each occurrence, inter alia, a 5-14 membered mono or bicyclic heterocycle containing 1-4 heteroatoms selected from N, O, and S, each group substituted with 0-2 R3b; R3b is independently at each occurrence, F, OH, or C1-3 alkyl (see e.g., p. 7, line 1-line25). Liu et al. further teaches the term "heterocycle" includes “heteroaryl” groups (see e.g., p. 26, line 26-28); exemplary monocyclic heterocyclyl groups include, inter alia, tetrahydrofuranyl (see e.g., p. 27, line 1-7); and exemplary monocyclic heteroaryl groups include, inter alia, pyridyl and the like (see e.g., p. 27, line 25-27). Liu et al. further teaches in compounds of formula I, preferred heteroaryl groups include, inter alia,
PNG
media_image24.png
65
72
media_image24.png
Greyscale
, and the like, which optionally may be substituted at any available carbon or nitrogen atom (see e.g., p. 28, line 8-13).
In the present case, the difference between the compound of Example 55 of Liu et al. and the claimed compound is that the prior art compound contains the tetrahydrofuranyl ring (
PNG
media_image2.png
9
13
media_image2.png
Greyscale
) rather than a pyridyl ring
PNG
media_image1.png
59
61
media_image1.png
Greyscale
shown below (see shaded):
PNG
media_image25.png
290
506
media_image25.png
Greyscale
.
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 Example 55 of Liu et al., and then modify said compound by substituting the tetrahydrofuranyl ring with a pyridyl ring as the 5-14 membered mono or bicyclic heterocycle at R3a of the formula (I) taught by Liu et al. One would have been motivated to do so, because Liu et al. teaches R3a can be a 5-14 membered monocyclic heterocycle containing 1-4 heteroatoms selected from N, O, and S; the term "heterocycle" includes “heteroaryl” groups; and further teaches
PNG
media_image24.png
65
72
media_image24.png
Greyscale
is one of the preferred heteroaryl groups. One would have a reasonable expectation of success to arrive at the claimed invention, because one would have reasonably expected that the compound of Example 55 of Liu et al. modified in accordance with the formula (I) taught by Liu et al. by substituting the tetrahydrofuranyl with a pyridyl ring would have successfully arrive at a compound of formula (I) that is similarly useful in the modulation of IL-12, IL-23 and/or IFN[Symbol font/0x61]; and therefore, said modified compound of Example 55 can successfully incorporate into a pharmaceutical composition without any appreciable loss of activity.
Please note the modified compound of Example 55 of Liu et al. sets forth above is a compound having the structure of
PNG
media_image4.png
50
61
media_image4.png
Greyscale
, and that is a compound of formula I instantly claimed
PNG
media_image22.png
259
161
media_image22.png
Greyscale
, wherein X is N; q is 0; n is 0; T1 and T5 are N; T2, T3, and T4 are CH; ring A is
PNG
media_image4.png
50
61
media_image4.png
Greyscale
(6-membered heteroaryl); m is 0.
Therefore, the claimed invention is prima facie obvious to one of ordinary skill in the art at the time the application was filed.
Claims 1-2, 4, 6-16 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (WO 2021/222153 A1; cited in the IDS filed on 7/27/2023) as applied to claims 1-2, 4, 6-9 and 12-16 above, and further in view of Patani et al. (Chemical Reviews, 1996. Vol. 96, 8: 3147-3176).
The teachings of Liu et al. are sets forth above and applied as before.
Liu et al. does not teach the elected compound species of Formula (I) having the structure of:
PNG
media_image1.png
59
61
media_image1.png
Greyscale
.
Patani et al. teaches bioisosterism represents one approach used by the medicinal chemist for the rational modification of lead compounds into safer and more clinically effective agents (see e.g., “introduction” section on p. 3147). Patani et al. further teaches a group of bioisosteres elicit similar biological activity, and have been classified as either classical or nonclassical (see e.g., p. 3148-3149). Patani et al. further teaches nonclassical bioisosteric replacements of halogen, in which halogens have been replaced by electron-withdrawing groups such as a cyano or trifluoromethyl group, as exemplified below:
PNG
media_image26.png
465
571
media_image26.png
Greyscale
(see e.g., p. 3172, left column, “6. Halogen Bioisosteres” section, line 1-4; Figure 85 and Table 52).
The difference between the modified compound of Example 55 of Liu et al. sets forth above and the claimed compound is that the modified compound contains the pyridyl ring that is unsubstituted rather than a pyridyl ring substituted with a trifluoromethyl group shown below (see shaded):
PNG
media_image27.png
294
522
media_image27.png
Greyscale
.
It would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to further modify the modified compound of Example 55 of Liu et al. sets forth above by substituting the pyridyl ring with a trifluoromethyl (-CF3) taught by Patani et al. One would have been motivated to do so, because Liu et al. teaches the 5-14 membered mono or bicyclic heterocycle at R3a can be substituted with 0-2 R3b selected from F, OH or C1-3 alkyl; and Patani et al. teaches halogens and trifluoromethyl (CF3) are non-classical bioisosteres in medicinal chemistry that can be interchanged to arrive at a compound with similar biological activity. One would have a reasonable expectation of success to arrive at the claimed invention, because one would have reasonably expected that the modified compound of Example 55 of Liu et al. sets forth above substituted with a trifluoromethyl (-CF3) would have successfully arrive at a compound that is similarly useful in the modulation of IL-12, IL-23 and/or IFN[Symbol font/0x61].
Therefore, the claimed invention is prima facie obvious to one of ordinary skill in the art at the time the application was filed.
Conclusion
No claims are allowed.
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.
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, Amy L. Clark can be reached at (571) 272-1310. 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.
/CHIHYI LEE/Examiner, Art Unit 1628 /JEAN P CORNET/Primary Examiner, Art Unit 1628