The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
1. This application is a 371 of PCT/US2022/016378 02/15/2022; PCT/US2022/016378 has PRO 63/150,695 02/18/2021.
Claims 1-19 are pending.
Response to Restriction Election
2. Applicant’s election of group I and the species,
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, in the reply filed on January 6, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)). According to applicants’ representative claims 1-11 read on the elected species.
Claim Interpretation
3. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The definition of A has a series of three structures containing A’ and A” rings, which “may contain one of more heteroatoms selected from N, O or S”, however the meaning of “contain” is not defined in the specification. Based upon the examples in specification and claim 4, contain appears to intended to mean replacement of a carbon atom with a heteroatom.1 However this is not the only interpretation since “contain” could reasonably include structures where the ring size is not limited to five or six membered rings and would include rings with more members containing heteroatoms not as replacements but internal additions, such that the heteroatoms are contained between the bonds in the structures.
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.
4. Claims 4-5, are 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. The claim 1 is has limited the rings A and A’ to either aromatic or aliphatic rings. Aromatic compounds include heteroaromatic compounds since aromaticity applies to any cyclic, planar, fully conjugated ring system with 4n + 2 π electrons, regardless of whether the ring contains only carbon (homoaromatic) or includes atoms like nitrogen, oxygen, or sulfur (heteroaromatic). This is not the case for aliphatic compounds. Aliphatics are “acyclic or cyclic, saturated or unsaturated carbon compounds”.2 There are a number of rings in the dependent claims that are not aromatic and not aliphatic but rather saturated heterocyclic rings or partially saturated heterocyclic rings, including most of the rings in claim 4, all the rings in claim 5 and many of the species in claim 8. Claim 8 is not dependent upon claim 1 and was not rejected however it contains rings in claims 4-5 that cannot be formed by the claimed language.3 In the first species in claim 8 for example:
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The imidazole ring is an aromatic ring, however the dihydropyrrole is neither an aromatic ring nor an aliphatic ring. In example 2:
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Morpholine is neither an aromatic ring nor an aliphatic ring.
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Neither piperidine nor piperazine are aromatic or aliphatic rings. Other examples could be given. 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.
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.
5. Claim(s) 1-4, 6, 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang US 20140275026 A1 (cited on the IDS). Wang teaches anticipatory species including but not limited to Example 51 4-(2,4-difluorophenoxy)-3-(1-methyl-7-oxo-6,7-dihydro-1H-pyrrolo[2.3-c]pyridin-3-yl)benzene sulfonamide on page 54 1st column where R1 is H, D is phenyl, A is the second structure, the ring A’ being the aromatic ring pyrrole, A” being the aromatic ring pyridine, where in both cases each ring contains a nitrogen heteroatom, where n is 2 and R2 is either -OR where R is H or oxo4 and C1 alkyl (methyl), p is 2 and R3 is halo (F).
6. Claim(s) 1-3, 6-7, 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li, Zizhou “Discovery of 8-Methyl-pyrrolo[1,2-a]pyrazin-1(2H)-one Derivatives as Highly Potent and Selective Bromodomain and Extra-Terminal (BET) Bromodomain Inhibitors.”
Journal of Medicinal Chemistry, 2020, 63(8), 3956-3975 (cited on the IDS). Li teaches anticipatory species including but not limited to compounds 28 and 35 on page 3960 where R1 is alkyl (t-Bu), D is pyridine or phenyl, A is the second structure, the ring A’ being the aromatic ring pyrrole, A” being the aromatic ring pyrazine where in both cases each ring contains a nitrogen heteroatom, where n is 2 and R2 is either -OR where R is H or oxo and C1 alkyl (methyl), p is 2 and R3 is halo (F). The compounds were formulated in DMSO and used in various assays.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID K O'DELL whose telephone number is (571)272-9071. The examiner can normally be reached on Monday - Friday 9:30 - 7:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached on 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID K O'DELL/Primary Examiner, Art Unit 1621
1 The three structures
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appear to be using bond-line formula, where the vertex (or an end of a line) represents a carbon atom, a line represents a bond and hydrogen atoms are not drawn in on the carbons but understood to be present (See: Johnson, A. W. Invitation to Organic Chemistry 1999 Jones and Bartlett: Mississauga, Canada, pg. 24.). A bond is two electrons and the lines in the A’ or A” rings all have single bonds between the carbon atoms, however according to additional claim language they may be “aromatic” such that the bonds are not only single bonds but may be double bonds and the representation is not an accurate depiction of the rings. The A' and A” rings are not defined in terms of accepted structural representation since they rely upon modification of known semiotic descriptions. The specification on page 47 lines 3-5 shows three additional structures with dative bonds said to be embodiments of A:
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.
2 The term aliphatic is somewhat nebulous, and the specification does not define it. It is used to refer to open chain alkyls, olefins or alkynes, and others consider cycloaliphatics, or alicyclics, as also part of aliphatics containing any cyclic hydrocarbon that is not aromatic. “aliphatic compounds” Online: https://doi.org/10.1351/goldbook.A00217 PAC, 1995, 67, 1307. (Glossary of class names of organic compounds and reactivity intermediates based on structure (IUPAC Recommendations 1995)) on page 1313.
3 Some of the names in claim 4 have genericized the rings in the species of claim 8, where the site of hydrogenation is ambiguous. Certain rings are compliant with 112 (d) depending upon the site of hydrogenation. For example “tetrahydroquinolinyl” would fall under the claimed description if the hydrogens were on the benzofused portion, i.e. a 5,6,7,8-tetrahydroquinoline, however the other isomers 1,2,3,4-tetrahydroquinoloine etc. with hydrogenated pyridine or partially hydrogenation of either rings would not. Most like those in claim 5 have a saturated heterocycle.
4 The hydroxy pyridine is the tautomeric form of the pyridin-2-one when the heteroaromatic pyridine substituted with oxo. According to the specification page 43 lines 10ff. “[A]ll tautomeric forms are also intended to be included….A "tautomer" refers to a molecule wherein a proton shift from one atom of a molecule to another atom of the same molecule is possible. The compounds presented herein, in certain embodiments, exist as tautomers. In circumstances where tautomerization is possible, a chemical equilibrium of the tautomers will exist. The exact ratio of the tautomers depends on several factors, including physical state, temperature, solvent, and pH.” Page 44 lines 11-12, “Where compounds of Formula I are capable of tautomerization, all individual tautomers as well as mixtures thereof are included in the scope of this invention.”