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
Claims 15-29 are pending. Claims 17-21 and 27 are withdrawn. Claims 15-16, 22-26 and 28-29 are rejected.
Response to Amendments/Arguments
Applicant’s arguments and amendments, filed 3/3/2026, with respect to:
Drawings;
Objection to claim 23;
112(b) rejection of claim 22;
112(d) of claim 16;
102 of 15-16 and 22-26;
have been fully considered and are persuasive. Particularly, Applicant’s 3/3/2026 amendments have overcome all previous rejections and objections. Therefore, the objections and rejections listed supra have been withdrawn. Consequently, Applicant remarks from 3/3/2026 will not be addressed. However, as necessitated by amendments, a new ground(s) of rejection is made in view of Elsawy et al. (Bioorganic & Medicinal Chemistry, 21, 2013, 5004-5011).
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.
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.
Claim(s) 15-16, 22-26, and 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Elsawy et al. (Bioorganic & Medicinal Chemistry, 21, 2013, 5004-5011).
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Elsawy discloses Smac/DIABLO-derived peptides (see title) and particularly teaches the following Compound 11-c (arrows added by Examiner):
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434
726
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(see Table 1 on p. 5007). To highlight, in Compound 11c, R1= C6H5 and R2 = (C6H5)2CH.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art teaches a positional isomer of the instant claims, wherein R1 of the instant Formula I is moved one position in the prior art. Picture of instant Formula-I shown here with added arrow by Examiner for clarity:
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186
231
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. Additionally, the prior art compound has different stereochemistry from the instant claims.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Regarding instant claims 15 and 16, the prior art compound 11c is a positional and stereoisomer of instant Formula-I (and compound 10 of instant claim 16), wherein A and B = C6 aryl; R1 = C6 aryl (moved one position on the five membered heterocycle); R2 = C4 alkyl; R3 and R4 = C1 alkyl. “ ‘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).” See MPEP 2144.09(II). Additionally, regarding stereoisomers: “An optically active isomer is unpatentable over a prior art racemate or optical isomer of opposite rotation in the absence of unexpected or unobvious beneficial properties”. In re Adamson et al. (CCPA) 1960 275 F2d 952, 125 USPQ 233. By moving the location of the instant R1 position one carbon on the 5 membered heterocycle, a PHOSITA would have reasonably expected similar properties and chemical reactivity. Also, the stereoisomer that is obvious over the prior art is also obvious without data showing superior, unexpected results of the instant isomer. Regarding instant claim 23, the prior art studied the disclosed compounds in assays that included lysis and assay buffers (see p. 5006, section 2.3) which would qualify as pharmaceutically acceptable excipients.
Regarding instant claims 22, 24-26, and 28-29: “There is no requirement that the prior art must suggest that the claimed product will have the same or similar utility as that discovered by applicant in order to support a legal conclusion of obviousness.” In re Dillon, 16 U.S.P.Q. 2d 1897, 1904 (Fed. Cir. 1990). Therefore, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”. Also, “The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)”. See MPEP 2145(II). Because the prior art has rendered obvious a compound of instant Formula-I, any additional properties or uses that flow from an obvious compound are inherent. Therefore, instant claims 22, 24-26, and 28-29 would also be obvious to a skilled artisan.
Conclusion
Applicant’s amendments necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. 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 extension fee 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 MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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/MEGHAN C HEASLEY/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626