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 .
Response to Arguments
Applicant’s arguments, see Pages 1-2, filed 12/16/2025, with respect to the 102 rejection(s) of claims 1-2 and 8-11 under Dai et al. (WO 2020073974 A1)) have been fully considered and are persuasive. Therefore, the rejection of claims 1-2 and 8-11 has been withdrawn.
Applicants argument (pages 1-2) of the experimental data of the compounds taught Jin et al (US Patent No. 20210115022) is not persuasive. Jin teaches compounds which reads to the compounds of claimed invention to treat the same diseases. Additionally not having experimental data on each and every embodiment does not constitute as not being prior art as per MPEP 2123: A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed 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). Thus, the rejection of claims 1, 3 and 8-11 over Jin is maintained.
Applicant has canceled claims 2-3. Claims 1 and 4-11 is pending. Claims 1 and 4-11 is now evaluated on its merits.
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.
Claims 1 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Jin et al. (US Patent No. 20210115022).
Regrading claims 1 and 8-11, Jin teaches methods and compositions for the treatment of metabolic diseases of obesity, hyperlipidemia, hypercholesterolemia, thyroid cancer, hypothyroidism and diabetes (relevant to claims 9-11) (abstract, para. 0002) comprising compounds
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(relevant to claim 1) (para. 0410) and a pharmaceutically acceptable excipient (relevant to claim 8) (para. 0031). The above structure reads to claim 1 of X1-X2 as N, R1 is H, X3 is N and X4 is CR13 wherein R13 is C3 alkyl. In terms of the positioning of X3-X4, they are of positional isomers and would possess similar properties of the claimed compound as per MPEP 2144.09 (II): Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or 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). There would be a reasonable expectation of the claimed compound with its structural limitations having the same structural properties as the above compound taught by Jin.
Allowable Subject Matter
Claims 4-7 are 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.
Conclusion
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.
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MIKHAIL O'DONNEL. ROBINSON
Examiner
Art Unit 1627
/MIKHAIL O'DONNEL ROBINSON/Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
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