DETAILED ACTION
This office action is in response to applicant’s filing dated December 31, 2025.
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 Claims
Claims 14 and 16 – 23 are pending in the instant application. Receipt and consideration of Applicants' amended claim set and remarks/arguments filed on December 31, 2025 are acknowledged. Acknowledgement is made of Applicant's amendment of claims 14, 16 – 23 and cancelation of claims 1 – 13 and 15.
Claims under consideration in the instant office action are claims 14 and 16 – 23.
Objections and/or Rejections and Response to Arguments
Applicants' arguments, filed on December 31, 2025, have been fully considered.
Acknowledgement is made of the Applicant’s cancellation of claims 1 – 13 and 15 and amendment of claims 16 – 20, 22 and 23 to be dependent from independent claim 14.
Accordingly, rejection of claims 1 – 6, 8 – 9, 15 – 20, 22 and 23 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Marx is withdrawn.
Acknowledgement is made of the Applicant’s cancellation of claims 1 and 13 and amendment of claim 14. The amendments as shown herein: “A compound or the pharmaceutically acceptable salt,[…]wherein the compound is
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, wherein R1-W is
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[…]”.
Accordingly, rejection of claims 1, 13 and 14 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Zhang is withdrawn.
Acknowledgement is made of the Applicant’s cancellation of clams 1 and 12 and amendment of claim 21, to be dependent of amended claim 14 (see above).
Accordingly, rejection of claims 1, 12 and 21 under 35 U.S.C. 103 as being obvious over teachings of Marx and Zhang is withdrawn.
Acknowledgement is made of the Applicant’s cancellation of clams 1 – 13 and amendment of claim 14 and claims 16 – 20, 22 and 23 to be dependent from independent claim 14. In view of amended claim 14, the provisional rejection on the ground of nonstatutory double patenting over claims of copending application #18/563,357 is rendered moot.
Accordingly, the provisional rejection of claims 1, 3 - 6, 8, 9, 13, 14, 18 - 20, 22, and 23 on the ground of nonstatutory double patenting as being unpatentable over claims of copending application #18/563,357 in view of Zhang is withdrawn.
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated (Maintained Objections and/or Rejections) or newly applied (New Objections and/or Rejections, Necessitated by Amendment or New Objections and/or Rejections, NOT Necessitated by Amendment). They constitute the complete set presently being applied to the instant application.
Modified Objections and/or Rejections
Modifications Necessitated by Claim Amendment
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.
Claim 21 is 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. Claim 21 recites exemplary structures e.g.:
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or
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, where variable R3 in the compound of formula (I-3) has a structure
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or
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which structures are not shown as the variants of R3 structure according to limitations of independent claim 14, which claim 21 depends on. 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 § 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.
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.
Claims 14 and 16 – 23 are rejected under 35 U.S.C. 103 as being unpatentable over Malhotra et al (WO 2020/097537 A2, hereinafter Malhotra) in view of Zhang et al (WO 2022/061251 A1, hereinafter Zhang).
Instant claims are drawn to a compound of formula (I-3)
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and a pharmaceutical composition thereof, where:
R1-W is
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,
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or
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;
L-R2 is
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or
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;
R3 is
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,
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,
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or
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;
R11 is H, hydroxyl or halogen;
R12 is H, hydroxyl or halogen, C1-C6 alkyl, ORd, where Rd is hydrogen alkyl or C3-C6 cycloalkyl. Instant claims are further drawn to a method for treating cancer mediated by KRAS G12C mutation, comprising administering to the subject compound of formula (I-3).
Malhotra teaches compounds of Formula (I):
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(page 21, [0103]), such as compounds of Formula (Ia)
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, Formula (Ib)
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or Formula (II)
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(pages 145 – 146, [0329]), where U is CH, V and W is C(R6b) or C(R6c), where R6b and R6c are independently hydrogen, halogen, C1-6 alkyl, C1-6 alkoxy, C3-7 cycloalkyl;
Y is
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(page 32, [0123]);
R2 and R3 are selected from the group consisting of H, OH, NH2, halo, C1-6 alkyl, C1-6 haloalkyl;
R4 and R5, together with the atoms to which they are each bonded, form a C3-7 cycloalkyl, 3 to 7 membered heterocycloalkyl, C6-14 aryl, or 5- to 10-membered heteroaryl; each of which is optionally substituted with 1 to 4 substituents, wherein each substituent is independently selected from the group consisting of OH, NH2, halo, C1-3 alkyl, C1-3 haloalkyl, C1-3 alkoxy, and C1-3 haloalkoxy. Thus, if R4 and R5 form 6-membered cycloalkyl, then the structure of the fragment
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of the compounds taught by Malhotra will be
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(5,6,7,8‐tetrahydroisoquinoline), when R4 and R5 form C6 aryl, then the fragment will be
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(isoquinoline), where 5,6,7,8‐tetrahydroisoquinoline and isoquinoline might be further substituted with one or more substituents as described above. One of the exemplary compounds taught by Malhotra is:
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(page 57, Table 1, compounds 63a and 63b). Malhotra further teaches a pharmaceutical composition comprising the compound of Formula (I) and a method for treating a disorder mediated by a K-Ras Gl2C mutation comprising administering to the individual a therapeutically effective amount of the compound of Formula (I) (page 149 [0351]).
Malhotra does not teach where the structural element in the molecule of Formula (I), which structural element corresponds to variable R3 of instantly claimed compounds is
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or
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.
However, Zhang teaches compounds of formula (I):
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, such as compounds of formula (IID)
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(page 27, [0107]) where R1 is
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, G is L1-L2-T2, L1 is -C(O)-, L2 is absent, T2 is cycloalkyl or heterocycloalkyl (page 54 – 55, [0146]); R2 is
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R4 is halogen (page 35, [0128] and page 22, [0103]); R3 is
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,
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or
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(page 40, [0134]), R5 is alkyl or halogen (page 54, [0146]); R7 is independently H or halogen. One of the exemplary compound of Zhang is
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(page 204, ex. P-0047). The compounds of Zhang are capable to inhibit one or more of KRAS such as G 12C. Although group
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of Zhang is not equivalent to ring W of instantly claimed compounds of formula (I), all the other structural elements of compounds taught by Zhang are equivalent to instantly claimed compounds. Additionally, compounds of Zhang have the same utility (G12C inhibitors).
Thus, since Malhotra teaches compounds having a structure of substituted quinazoline and acting as KRAS G12C inhibitors, Zhang teaches compounds having a structure of substituted quinazoline capable to inhibit KRAS G12C, where substituents are the same as or similar to those, taught by Malhotra, and equivalent to instantly claimed, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention to combine teachings of prior art and make various known compounds acting as KRAS G 12C inhibitors, to arrive at claimed compounds. The one of ordinary skills would be motivated to do so in search of an active agent capable to inhibit KRAS G 12C, with improved desired properties with the reasonable expectation of success.
Therefore, taking all together, taught by prior art, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant argues:
- the cancellation of Claims 1 and 12 and the amendment of Claim 21 to depend
from Claim 14 renders this rejection moot;
- the claims as amended are patentably novel over Marx and Zhang, because neither Marx, nor Zhang, alone or in combination, teach or suggest the combined features of Claim 14 as amended;
- the scaffolds of Marx and present Claim 14 are different, for at least the reason that the middle double ring of the amended Claim 14 contains two N atoms in the basic core structure, while the middle double ring of Marx requires three N atoms.
Examiner’s response:
Applicant's arguments have been fully considered. Examiner acknowledges that in view of amended claim 14, rejection of instant claims as being obvious over teachings of Marx and Zhang is moot. However, in view of teachings of newly applied art (see the rejection section) instant claims are considered obvious. Malhotra and Zhang teach compounds of the same quinazoline core as instantly claimed compounds, where all the corresponding structural elements are taught by combined references of Malhotra and Zhang. Compounds, taught by prior art are useful for the same purpose, as an active agent, inhibiting mutated KRAS G12C.
Therefore, Applicant’s arguments are not persuasive in view of newly applied art, and the rejection of claims 14 and 16 – 23 as obvious over teachings of Malhotra and Zhang is maintained.
Conclusion
Claims 14 and 16 – 23 are rejected. No claim is allowed.
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 ELENA V VISHNYAKOVA whose telephone number is (571)272-3781. The examiner can normally be reached 7:30am - 5pm ET.
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/E.V.V./Examiner, Art Unit 1691
/SAVITHA M RAO/Primary Examiner, Art Unit 1691