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 .
Priority
The present application is a Section 371 of International Application No. PCT/CN2021/124469, filed October 18, 2021, which was published in the Chinese language on June 30, 2022 under International Publication No. WO 2022/134773 A1, which claims priority under 35 U.S.C. § 119(b) to Chinese Application No. 202011518497.8, filed December 21, 2020.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted on June 15th, 2023 (6 references) and October 30th, 2024 (3 references) has been received entered into the present application, in compliance with the provisions of 37CFR 1.97. Accordingly, the Information Disclosure Statements are being considered by the Examiner.
Status of the Claims
Currently, claims 1-20 are pending in the instant application.
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 5 are rejected 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.
Claims 4 and 5 are directed to a Markush group of options for variables of R7 (as in claim 4) and R8 and R9 (as in claim 5) for the compound of Formula (I) that both use the term “preferably” to further limit the options of each of the variables for R7, R8 and R9 within the claims.
Claims 4 and 5 are indefinite for reciting the term “preferably” because one of ordinary skill in the art cannot reasonably determine the metes and bounds of the term and the Applicant’s intent within the stated scope of a claims. It is not clear whether the variables identified as “preferred” embodiments of the variables in the instant claims narrow the range or is a limitation R7, R8 and R9 that is critical to the effectiveness of the compound of Formula (I) as a KRAS inhibitor.
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)(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 1-7
Claims 1-7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Pub. No. US 2021/0122764 A1, that claims provisional application No. 63 /030,014, filed on May26, 2020 and provisional application No. 62 / 926,879 filed on Oct. 28, 2019.
Claim 1 is directed towards the genus compound of Formula I, wherein, the variables for X, R1, R2a, R2b, R2c, R3, and R4-R14 are identified from a Markush group of options for each variable. Compound 92 of US 2021/0122764 A1 anticipates the genus of claim 1 when X is N, R1, R2a, and R2b are a halogen, R2c is hydrogen, m is 0 and providing that R3, R4, R5 and R6 are not all hydrogen at a time, and wherein either R3 and R4 or R5 and R6 are: C(O)NRBR14 and -N(RB)-C(O)R12, or, R3 and R4, together with the carbon atom directly attached thereto, form C(O), 3-12 membered cycloalkyl or 3-12 membered heterocyclyl, above groups. R3 and R4 can form a cyclopropane and the other variables in the group of either R3, and R4 or R5 and R6 can be hydrogen. R8 is a C1-10 alkyl (isopropyl).
Applicants compound of formula (I)
U.S. Application Pub. No. 2021/0122764A1 Compound 92
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The compound of the prior art meets the limitations of the variables X, R1, R2a, R2b, R2c, R3, and R4-R8.
Accordingly, claim 1 is anticipated by Compound 92 of US 2021/0122764 A1.
Claim 2 further limits the compound of formula (I) in claim 1 and requires R3 and R4 or R5 and R6 to be selected from a group consisting of hydrogen or a C1-4 alkyl; provided that R3, R4, R5 and R6 are not all hydrogen at a time, with either R3 and R4 or R5 and R6 wherein either R3 and R4 or R5 and R6 are: C(O)NRBR14 and -N(RB)-C(O)R12, or, R3 and R4, together with the carbon atom directly attached thereto, form C(O), 3-12 membered cycloalkyl or 3-12 membered heterocycle. R3 and R4 can form a cyclopropane and the other variables in the group of either R3, and R4 or R5 and R6 can be hydrogen.
Accordingly, claim 2 is anticipated by Compound 92 of US 2021/0122764 A1.
Claim 3 further limits the compound of formula (I) in claim 1, specifically the variables R1, R2a, R2b and R2c. Compound 92 of US 2021/0122764 A1 anticipates the genus of claim 1 when R1, R2a, and R2b are fluorine and R2c is hydrogen.
Accordingly, claim 3 is anticipated by Compound 92 of US 2021/0122764 A1.
Claim 4 further limits the compound of formula (I) in claim 1, specifically the variable R7. Compound 92 of US 2021/0122764 A1 anticipates the genus of formula (I) in claim 1when R7 is hydrogen.
Accordingly, claim 4 is anticipated by Compound 92 of US 2021/0122764 A1.
Claim 5 further limits the compound of formula (I) in claim 1, specifically the variables R8 and R9. Compound 92 of US 2021/0122764 A1 anticipates the genus of formula (I) in claim 1 when R8 and R9 are each independently selected from either a C1-4 alkyl or hydrogen.
Accordingly, claim 5 is anticipated by Compound 92 of US 2021/0122764 A1.
Claim 6 further limits the compound of formula (I) wherein the compound of formula (I) is a compound having the formula (II) (detailed below). The main difference is that the compound of formula (II) is a stereoisomer that introduces the variables R7a and R7b. Compound 92 of US 2021/0122764 A1 anticipates the genus of formula (II) when X is N, R1, R2a, and R2b is fluorine, and providing that R3, R4, R5 and R6 are not all hydrogen at a time, and that either R3 and R4 or R5 and R6 can be C3-6 cycloalkyl (i.e. cyclopropane as in compound 92), the other variables in the group of either R3, and R4 or R5 and R6 can both be hydrogen.
Applicants compound of formula (II)
U.S. Application Pub. No. 2021/0122764A1 Compound 92
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Accordingly, claim 6 is anticipated by Compound 92 of US 2021/0122764 A1.
Claim 7 further limits the compound of formula (I) wherein the compound of formula (I) is a compound having the formula (III) (detailed below). Formula (III) is a stereoisomer that introduces an isopropyl at the position previously identified as R8 in formula (I). Compound 92 of US 2021/0122764 A1 anticipates the genus of formula (III) when R1, R2a, and R2b is fluorine and R7 is hydrogen and providing that R3, R4, R5 and R6 are defined as in claim 6.
Applicants compound of formula (I)
U.S. Application Pub. No. 2021/0122764A1 Compound 92
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Accordingly, claim 7 is anticipated by Compound 92 of US 2021/0122764 A1.
Claim 14 further limits the compound of formula (I) by defining the variables R10- R14 that are not identified in the compound listed in formula (I). Compound 92 of US 2021/0122764 A1 anticipates the genus of claim 1 as shown in the rejection to claim 1 above.
Accordingly, the instant claim is rejected for the same reasons as claim 1.
Claim 16 is directed to a method for preparing formula (I) using an amino-protecting group on an intermediate compound. The amino-protecting group refers to a piperazine molecule where one or both nitrogen atoms are temporarily blocked (protected) with standard protecting groups like Boc (tert-Butoxycarbonyl) as identified in the instant claim. US 2021/0122764 A1 anticipates the use of tert-Butoxycarbonyl to protect nitrogen atoms of intermediate compounds during the synthesis of compound 92.
Accordingly, the instant claim is rejected.
Claim 17 further limits claim 1 by requiring a pharmaceutical sale and a pharmaceutical carrier for formula (I). US 2021/0122764 A1 anticipates the use of both a pharmaceutical carrier, for example:
Formula (I) and/or their pharmaceutically acceptable salts, together with one or more solid or liquid pharmaceutical carrier substances and/or additives (or auxiliary substances) and, if desired, in combination with other pharmaceutically
active compounds having therapeutic or prophylactic action
US 2021/0122764 A1, page 12 col. 2, [215] (emphasis added).
Accordingly, the instant claim is rejected.
Claims 18-20 are directed to a method of use of formula (I) for treating cancer involving at least partially mediated by K-RAS Gl2C mutation (as in claim 18), and specific cancers (as in claim 19 and 20). US 2021/0122764 A1 anticipates the instant claims in [8] where the use of the compound of Formula (I) is “In certain embodiments, the compounds of Formula (I) can inhibit the KRAS (G 12C) protein. The disclosure furthermore provides processes for preparing
compounds of Formula (I), methods for using such compounds to treat oncological disorders”. For example, in [223], [224], and [226] the broad group of cancers include pancreatic cancer, colorectal cancer or lung cancer, gall bladder cancer, thyroid cancer, or bile duct cancer, leukemias and lymphomas. [231] details a more exhaustive list of cancers intended to be treated.
Accordingly, the instant claims are rejected.
Allowable Subject Matter
Claims 8-13 and 15 are free of the art.
Applicant has developed species of the compound of the genus of formula (I).
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Applicant’s particular species, as recited in claims 8-13 and 15, are not found in the art and would not be predictable to one of ordinary skill in the art.
Claims 8-13 and 15 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
Claims 1-7, 14, 16, 17-20 are rejected.
Claims 8-13 and 15 are free of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL RANDALL GAUGER whose telephone number is (571)272-1325. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffery Lundgren can be reached at (571)272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P.R.G./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629