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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Application Status
The preliminary amendment filed on 7/23/2023 is acknowledged. Claims 1-2 are currently pending and under consideration.
Information Disclosure Statement
The information disclosure statements filed on 7/27/2023 and 10/15/2024 have been considered except where lined through.
Claim Objections
Claim 2 is objected to because of the following informalities: Claim 2 recites “A compound selected from the group considering of the following compounds or a pharmaceutically acceptable salt thereof:…” and provides a table contain the compound no, chemical name and structural formula. Accordingly, claim 1 is a Markush group. However, the claim does not set forth the compounds as alternatives. Moreover, there is no comma separating the compounds or “and” compound 15.
Claims may contain tables either if necessary to conform to 35 U.S.C. 112 or if otherwise found to be desirable. See MPEP § 2173.05(s). When such a patent is printed, however, the table will not be included as part of the claim, and instead the claim will contain a reference to the table number.
Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted). MPEP 2173.05(s).
It is suggested that Applicants remove the colon, either recite the chemical name or structure of the compound separated by “,” and include an “and” prior to recitation of the final compound. 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 (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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nicola Aston (US7271289B2, 2007-09-18) in view of Patani and Lavoie (Chem. Rev. 1996, 96: 3147-3176).
Nicola Aston teach compounds of formula (I) having the structure
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, wherein V and Y are each independently a hydrogen or a halogen which are useful as p38 kinase inhibitors (abstract). Specifically, Nicola Aston teach a compound having the structure
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138
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, wherein R1 in the claimed compound is an unsubstituted pyrrolidine.
The claimed compound differs from the prior art in that the fluorine (V) of the prior art is a hydrogen in the instant application.
Patani and Lavoie teaches that the substitution of hydrogen by fluorine is one of the more commonly employed monovalent isosteric replacements, wherein the pharmacological differences can be attributed to the influence of the electron-withdrawing effect that the fluorine substitution causes on interaction with either a biological receptor or enzyme, as well as, its effect on the metabolic fate of the drug (page 3149, 1st column, Fluorine vs. Hydrogen Replacements).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute the fluorine within the compound taught by Nicola Aston with a hydrogen in view of the teachings of Patani and Lavoie. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-Patani and Lavoie teach that fluorine vs. hydrogen is one of the most commonly used bio isosteric replacements.
Conclusion
Therefore, No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRANDON J FETTEROLF whose telephone number is (571)272-2919. The examiner can normally be reached M-F 6AM-4PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph McKane can be reached at 571-272-0699. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRANDON J FETTEROLF/Primary Examiner, Art Unit 1626
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