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 .
Detailed Action
This office action is in response to applicant’s communication filed on 2/4/26.
Claims 1-28 and 30-34 are pending in this application.
Applicant's election of Group 1, claims 1-28 and 31, in the reply filed on 2/4/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP 818.03(a)).
Claims 32-34 are withdrawn from consideration being drawn to the non-elected invention.
Applicant’s election of the following compound is acknowledged herewith:
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Claims 1, 4-5, 7-8, 14-19, 23-28 and 31 read on applicant’s elected species.
However, applicant’s elected species has been found allowable.
Thus the new species to be examined is the following:
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Thus, additionally, claims 2-5, 8-16, 19-20, 23-25, 28 and 30 are hereby withdrawn from consideration being non-readable on the new species. The search has not been extended to determine the patentability of the other species encompassed by the claims.
As a result, claims 1, 6-7, 17-18, 21-22, 26-27 and 31 are being examined in this Office Action and claims 2-5, 8-16, 19-20, 23-25, 28, 30 and 32-34 are withdrawn.
Priority
The applicant claims benefit as follows:
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Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “C4-C10 heteroaryloxy F, Cl, Br“. The examiner recommends instead “C4-C10 heteroaryloxy, F, Cl, Br“, which includes the missing comma.
Appropriate correction is required.
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 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 of this title, 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 1, 6-7, 17-18, 21-22, 26-27 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Jozefiak et al. (US 20040019113, pub date Jan. 29, 2004).
The instant claims are drawn to the following compound:
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Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Jozefiak et al. teaches the following bis-aryl compound of Formula (I), a phosphate transport inhibitor, and pharmaceutical compositions of. (abstract, paragraphs 6, 93):
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Jozefiak et al. teaches the Ar1 and Ar2 can be alkoxy or trifluoromethoxy substituted phenyl groups, (paragraph 7, 24, 85)
Furthermore, Jozefiak et al. shows the equivalency of methoxy and ethoxy substituted phenyl groups. (Table 4, page 50, See Compounds 203 and 212)
Jozefiak et al. exemplifies the following phosphate transport inhibitor (Example 36, paragraph 173):
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Jozefiak et al. Example 36 reads on applicant’s compound of formula (I):
Z = 2-methoxy substituted phenyl
L = bond
R2 = 4-trifluoromethoxy substituted phenyl
R3 = R4 = H
R1 =
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A1 =
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Ascertainment of the Difference Between Scope the Prior Art and the Claims
(MPEP §2141.012)
Jozefiak et al. is deficient in the sense that it does not exemplify the ethoxy substituted phenyl substituent, but instead exemplifies the methoxy substituted phenyl substituent.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
However, it would be prima facie obvious to one of ordinary skill in the art at the time of the invention, to substitute a methoxy for an ethoxy on the phenyl group of Jozefiak et al.’s phosphate transport inhibitor, since it is an adjacent homolog and homologs are prima facie obvious. See Ex parte Bluestone, 135 USPQ 199 (Bd. Pat. App. & Int. 1961).
Thus with regard to applicant’s particular compound, it is the position of the examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the appropriate alkyl group in the alkoxy substituent, since methyl (methoxy) and ethyl (ethoxy) are adjacent homologs with a difference of only one methylene group. The applicant does not show any unusual and/or unexpected results for the limitations stated. The close structural similarity between methoxy and ethoxy, with only one methylene group difference, suggests the compounds have similar properties and utilities (see MPEP § 2144.09). Applicant’s compound with an ethoxy substituent is a structurally similar isomer to that known in the art.
Furthermore, Jozefiak et al. teaches the equivalency of methoxy and ethoxy substituted phenyl groups. Thus, at the time of instant invention, a person of ordinary skill in the art would have been motivated to substitute a methoxy group with an ethoxy group, with a reasonable expectation of success. Note that an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Furthermore, “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homolog because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.” (see In re Deuel 34 USPQ2d 1210, 1214 and MPEP § 2144.08c). In addition, homologs are generally so structurally similar that “without more” such structural similarity could give rise to prima facie obviousness (see In re Wilder, 563 F.2d 457, 195 USPQ 426).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
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Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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