DETAILED ACTION
All rejections and objections not mentioned below have been withdrawn.
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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. GB2019475.9, filed on 12/10/2020.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02/13/2024, 02/13/2024, 11/24/2025 are being considered by the examiner.
Claim Interpretation
As no specific structural requirement has been identified by the specification to provide for the function of the inhibition of ALDH1A3 the examiner has interpreted the claims to assume that any compounds of the generic formula of claim 67 inhibits ALDH1A3. This then assumes that any compounds of this formula inherently inhibit ALDH1A3. If this is untrue there would be a 112(a) rejection because the applicants have not enabled the selection of which compound would inhibit ALDH1A3.
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.
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.
Claim(s) 67-71 and 83-84 is/are rejected under 35 U.S.C. 103 as being unpatentable over NISHI (NISHI et al., EP 0240015 A2, 1987-10-07).
The reference NISHI teaches the follow compound (pages 72 and 84, Table 2), wherein Q=CH2CH2, R1=R3=R4=H, J=
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95
157
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, B= heteroaromatic 5 membered ring, M2=phenyl.
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215
482
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728
1102
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This helps to teach claims 67-71 and 83.
The reference NISHI also teaches “Carbostyril derivatives and salts thereof represented by the general formula (1) according to the present invention can be used in any form of usual pharmaceutical compositions which are prepared by using usual pharmaceutically acceptable carriers”(page 56). This helps to teach claim 84.
The reference also teaches “Use of the compounds defined in any of claims 1 to 39·or the salts thereof, or the final products prepared in claims 40 to 43 or the salts thereof in the preparation of a medicament for inhibiting adhesion of thrombocytes”(reference claim 50).
The reference NISHI does not specifically teach a compound of the instant invention because the ‘A’ variable of example 48 has one too many CH2 groups.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified NISHI to produce a compound of the instant invention because the only difference between for instance
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85
390
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and the example 48 of NISHI is one CH2 group in a chain of CH2 groups. Compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Thus the small change of one CH2 unit would have close structural similarity and there is a presumed expectation of success that one such compound would possess similar properties as example 48 and thus would be useful in in the preparation of a medicament for inhibiting adhesion of thrombocytes. Thus one would be motivated to modify example 48 to structurally similar compounds that could also be useful to preparation of a medicament for inhibiting adhesion of thrombocytes and may provide a possible improvement in activity.
Allowable Subject Matter
Claims 72-82 and 85-86 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claim(s) 67-71 and 83-84 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Claims 67-71 and 83-84 are rejected.
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 ALISON AZAR SALAMATIAN whose telephone number is (703)756-4584. The examiner can normally be reached Mon-Thurs 7:30am-5pm EST Friday 7:30-4pm EST (every other Friday off).
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/A.A.H./ Examiner, Art Unit 1627
/Kortney L. Klinkel/ Supervisory Patent Examiner, Art Unit 1627
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