Prosecution Insights
Last updated: April 19, 2026
Application No. 18/278,078

INHIBITORS OF EPHB3 SIGNALING

Non-Final OA §102§103§112§DP
Filed
Aug 21, 2023
Examiner
SHIAO, REI TSANG
Art Unit
1691
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
The Brigham And Women`S Hospital Inc.
OA Round
1 (Non-Final)
80%
Grant Probability
Favorable
1-2
OA Rounds
2y 3m
To Grant
45%
With Interview

Examiner Intelligence

Grants 80% — above average
80%
Career Allow Rate
1612 granted / 2019 resolved
+19.8% vs TC avg
Minimal -35% lift
Without
With
+-35.0%
Interview Lift
resolved cases with interview
Typical timeline
2y 3m
Avg Prosecution
53 currently pending
Career history
2072
Total Applications
across all art units

Statute-Specific Performance

§101
0.7%
-39.3% vs TC avg
§103
29.1%
-10.9% vs TC avg
§102
8.1%
-31.9% vs TC avg
§112
29.6%
-10.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 2019 resolved cases

Office Action

§102 §103 §112 §DP
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 Priority and Status of the Claims 1. This application is a 371 PCT/US2022/018894 03/04/2022, which claims benefit of the provisional application: 63156700 03/04/2021. 2 . Claims 1 and 17-35 are pending in the application. Claim Rejections - 35 USC § 112 3 . 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. Claim 31 is 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 pre-AIA the applicant regards as the invention. Claim 31, line 4-5, recites the limitation of ten compounds, e.g . ,and , see lines 4-5. There is insufficient antecedent basis for this limitation in claim 29 . It is noted that a phenyl ring moiety is linked to C(=O)NR2 in formula (If) of claim 29 , while the compounds of claim 31 links to a heteroaryl moiety. 4 . 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. Claim Rejections - 35 USC § 102 5 . 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale , or otherwise available to the public before the effective filing date of the claimed invention. Claim 1 is rejected under 35 U.S.C. 102 FILLIN "Insert either \“(a)(1)\” or \“(a)(2)\” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia, 7.15.02.aia or 7.15.03.aia where applicable." \d "[ 2 ]" (a) (1) as being anticipated by Qiao et al. CAS: 152: 29671, 2009, Liu et al. CAS; 164: 456386, 2016, Millet al. CAS: 154: 540483, 2011, and Qiao et al. US 2012/0238597 A1 respectively. Applicants claim a compound of formula (I), , or a pharmaceutically acceptable salt thereof, wherein: R is selected from C6-io aryl, 4-10 membered heterocycloalkyl , and 5-14 membered heteroaryl, each of which is optionally substituted with 1, 2, or 3 substituents independently selected from halo, CN, OR a 1 , CI-3 alkyl, and CI-3 haloalkyl, wherein said C 1 -3 alkyl is optionally substituted with 1 or 2 independently selected R g ; R 2 is selected from H and CI-3 alkyl; R 3 is selected from H, C1-3 alkyl, and CI-3 haloalkyl, wherein said CI-3 alkyl is optionally substituted with 1 or 2 independently selected R g ; R 5 is selected from H, halo, CN, OR a 1 , NR c 1 R d 1 , C1-6 alkyl, C1-6 haloalkyl, and Cy l , wherein said C 1 -6 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from halo, CN, OR a 1 , C(O)R b 1 , C(O)NR c1 R d 1 , C(O)OR a 1 OC(O)NR c1 R d 1 , and NR c1 R d 1 ; each Cy l is independently selected from C6-io aryl, 5-14 membered heteroaryl, C3-10 cycloalkyl, and 4-10 membered heterocycloalkyl , each of which is optionally substituted with 1, 2, 3, 4, or 5 substituents independently selected R cy 1 ;each R cy 1 is independently selected from halo, CN, OR a 1 C(O) OR al , OC(O) Rl , OC(O) NR c 1 R d 1 , NR c 1 R d 1 , Cy 2 , C1-6 alkyl, C1-6 haloalkyl, and oxo, wherein said C1-6 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from OR a1 , C(O)R b1 , C(O)NR c1 R d 1 , C(O)OR a1 , OC(O)R b 1 , OC(O)NR c 1 R d1 , and NR c 1 R a 1 - each Cy 2 is independently selected from C6- 10 aryl, 5-14 membered heteroaryl, C3-io cycloalkyl, and 4-10 membered heterocycloalkyl , each of which is optionally substituted with 1, 2, or 3 substituents independently selected from R cy2 ;each R cy2 is independently selected from halo, CN, Ci- 6 alkyl, Ci- 6 haloalkyl, OR a 1 ,C(O)R b 1 , C(O)NR c1 R d1 , C(O)OR a 1 , OC(O)R b 1 , OC(O)NR c 1 R d1 , and N R c 1 R d1 , wherein said C 1 -6 alkyl is optionally substituted with 1, 2, or 3 independently selected R g ; R 4 and R 7 are each independently selected from H, halo, CN, S(O)R b 1 ,C(O)N R c1 R d1 , C(O)OR a 1 , C 1 - 3 alkyl, C 1 - 3 haloalkyl, and Cy 2 , wherein said Ci-3 alkyl is optionally substituted with 1 or 2 independently selected R g ; R 6 is selected from H, halo, CN, OR ai S(O)R b 1 , C(O)N R c1 R d1 C(O)OR a 1 ,Ci-6 alkyl, C 1 -3 haloalkyl, Cy 2 , and a reactive electrophilic warhead group, wherein said C 1 - 6 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from halo, CN, OR a 1 , and N R c1 R d1 ; R a 1 , R b 1 , R c1 , and R d 1 are each independently selected from H, C1-3 alkyl, and C 1 -3 haloalkyl, wherein said C 1 -3 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from R g ; and each R g is independently selected from halo, CN, OH, C1-3 alkoxy, C 1 -3 haloalkoxy, carboxy, C 1 -6 alkoxycarbonyl , amino, C 1 -6 alkylamino, and di(C 1 -6 alkyl)amino. Qiao et al. ‘671 discloses 11 compounds, see RN: 1198408-34-2, 1198408-40-0, 1198408-73-9, 1198408-74-0, 1198408-75-1, 1198408-76-2, 1198408-77-3, 1198408-78-4, 1198408-37-5, 1198408-38-6, and 1198408-39-7. They clearly anticipate the instant compound of formula (I), wherein R1 is aryl substituted with halo, R2 is H, R3 is H or alkyl, R4-R7 is selected from H, halo, aryl, or heterocycloalkyl . Liu et al. ‘386 disclose 6 c omp ounds, see RN: 1268454-65-4 , 1268455-51-1 , 1268455-63-5 , 1268456-05-8 , 1268457-07-3 , and 1268458-92-9 . They clearly anticipate the instant compound of formula (I) in claim 1 or ( Ib ) in claim 21 , wherein R1 is heteroaryl, heterocycloalkyl , R2 is H, R3 is H or alkyl, R4-R7 is selected from H, halo, aryl, heteroaryl, or heterocycloalkyl . Miller et al. ‘483 discloses 6 compounds, see RN: 241146-68-9 , 1282522-72-8 , 1300029-36-0 , 1300029-78-0 , 1300029-79-1 , and 1300029-80-4 . They clearly anticipate the instant compound of formula (I), wherein R1 is aryl substituted with halo or OR a1 and R a is alkyl , R2 is H, R3 is H or alkyl, R4-R7 is selected from H, or alkyl. Qiao et al. ‘597 discloses 7 compounds, see compounds No. a -g in claim 12 in columns 22-23. They clearly anticipate the instant compound of formula (I), wherein R1 is aryl substituted with halo, R2 is H, R3 is H or alkyl, R4-R7 is selected from H, halogen, cycloalkyl, heterocycloalkyl or heteroaryl. Claim Rejections - 35 USC § 103 6 . The following is a quotation of 35 U.S.C. 103(a) 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 non-obviousness. This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(f) or (g) prior art under 35 U.S.C. 103(a). Claim s 1 and 17-35 are rejected under 35 U.S.C. 103(a) as being obvious over Qiao et al. US 2012/0238597 A1 Applicants claim a compound of formula (I), , or a pharmaceutically acceptable salt thereof, wherein: R is selected from C6-io aryl, 4-10 membered heterocycloalkyl , and 5-14 membered heteroaryl, each of which is optionally substituted with 1, 2, or 3 substituents independently selected from halo, CN, OR a 1 , CI-3 alkyl, and CI-3 haloalkyl, wherein said C 1 -3 alkyl is optionally substituted with 1 or 2 independently selected R g ; R 2 is selected from H and CI-3 alkyl; R 3 is selected from H, C1-3 alkyl, and CI-3 haloalkyl, wherein said CI-3 alkyl is optionally substituted with 1 or 2 independently selected R g ; R 5 is selected from H, halo, CN, OR a 1 , NR c 1 R d 1 , C1-6 alkyl, C1-6 haloalkyl, and Cy l , wherein said C 1 -6 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from halo, CN, OR a 1 , C(O)R b 1 , C(O)NR c1 R d 1 , C(O)OR a 1 OC(O)NR c1 R d 1 , and NR c1 R d 1 ; each Cy l is independently selected from C6-io aryl, 5-14 membered heteroaryl, C3-10 cycloalkyl, and 4-10 membered heterocycloalkyl , each of which is optionally substituted with 1, 2, 3, 4, or 5 substituents independently selected R cy 1 ;each R cy 1 is independently selected from halo, CN, OR a 1 C(O) OR al , OC(O) Rl , OC(O)NR c 1 R d 1 , NR c 1 R d 1 , Cy 2 , C1-6 alkyl, C1-6 haloalkyl, and oxo, wherein said C1-6 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from OR a1 , C(O)R b1 , C(O)NR c1 R d 1 , C(O)OR a1 , OC(O)R b1 , OC(O)NR c1 R d1 , and NR c 1 R a 1 - each Cy 2 is independently selected from C6- 10 aryl, 5-14 membered heteroaryl, C3-io cycloalkyl, and 4-10 membered heterocycloalkyl , each of which is optionally substituted with 1, 2, or 3 substituents independently selected from R cy2 ;each R cy2 is independently selected from halo, CN, Ci- 6 alkyl, Ci- 6 haloalkyl, OR a 1 ,C(O)R b 1 , C(O)NR c1 R d1 , C(O)OR a 1 , OC(O)R b 1 , OC(O)NR c 1 R d1 , and N R c 1 R d1 , wherein said C 1 -6 alkyl is optionally substituted with 1, 2, or 3 independently selected R g ; R 4 and R 7 are each independently selected from H, halo, CN, S(O)R b 1 ,C(O)N R c1 R d1 , C(O)OR a 1 , C 1 - 3 alkyl, C 1 - 3 haloalkyl, and Cy 2 , wherein said Ci-3 alkyl is optionally substituted with 1 or 2 independently selected R g ; R 6 is selected from H, halo, CN, OR ai S(O)R b 1 , C(O)N R c1 R d1 C(O)OR a 1 ,Ci-6 alkyl, C 1 -3 haloalkyl, Cy 2 , and a reactive electrophilic warhead group, wherein said C 1 - 6 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from halo, CN, OR a 1 , and N R c1 R d1 ; R a 1 , R b 1 , R c1 , and R d 1 are each independently selected from H, C1-3 alkyl, and C 1 -3 haloalkyl, wherein said C 1 -3 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from R g ; and each R g is independently selected from halo, CN, OH, C1-3 alkoxy, C 1 -3 haloalkoxy, carboxy, C 1 -6 alkoxycarbonyl , amino, C 1 -6 alkylamino, and di(C 1 -6 alkyl)amino. Dependent claims 17-35 further limit the scope of compounds, i.e., the compounds of formula (I) is formula ( Ia ) in claims 17-20, the compounds of formula (I) is formula ( Ib ), ( Ic ) or (Id) in claims 21-30, specific compounds in claim 31, a pharmaceutical composition comprising a compound of formula (I) in claim 32, methods of use for treating diseases selected from neurodegenerative disease (i.e., neuronal system injury) including Parkinson’s disease in claims 33-35. Determination of the scope and content of the prior art (MPEP §2141.01) Qiao et al. ‘59 7 discloses a compound/composition comprising a compound of formula (II), , or a pharmaceutically acceptable salt thereof; wherein: R1' is halogen; R2' is selected from the group consisting of hydrogen and lower (C1-C8) alkyl; and R3' is hydrogen, halogen, cycloalkyl, cycloheteroalkyl , aryl, or heteroaryl , see claim 7 in column 22 . Qiao et al. ‘59 7 compounds are used for treating a neuronal system injury characterized by EphB3 kinase activity , see claim 13 in column 23 . Determination of the difference between the prior art and the claims (MPEP §2141.02) The difference between instant claims and Qiao et al. ‘59 7 is that the instant claims are embraced within the scope of Qiao et al. ‘59 7 . Qiao et al. ‘59 7 compounds/compositions and methods of use read on the instant compounds of formula (I) in claims 1 and 17-20, formulae ( Ib ), ( Ic ) or (Id) in claims 21-30 and 32, specific compounds in claim 31, and methods of use in claims 33-35. Finding of prima facie obviousness-rational and motivation (MPEP §2142-2143) One having ordinary skill in the art would find the claims 1 and 17-35 prima facie obvious because one would be motivated to employ the compound/composition and methods of use of Qiao et al. ‘59 7 to obtain instant invention. The motivation to make the claimed comound s /compositions and methods of use derived from the known compound/composition and methods of use of Qiao et al. ‘59 7 would possess similar activity to that which is claimed in the reference. Double Patenting 7 . The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b). Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b). Claim 1 is rejecte d under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 1 of Qiao et al. US 8,927,545. Although the conflicting claims are n ot identical, they are not patentably distinct from each other and reasons are as follows. Applicants claim a compound of formula (I), , or a pharmaceutically acceptable salt thereof, wherein: R is selected from C6-io aryl, 4-10 membered heterocycloalkyl , and 5-14 membered heteroaryl, each of which is optionally substituted with 1, 2, or 3 substituents independently selected from halo, CN, OR a1 , CI-3 alkyl, and CI-3 haloalkyl, wherein said C1-3 alkyl is optionally substituted with 1 or 2 independently selected R g ; R 2 is selected from H and CI-3 alkyl; R 3 is selected from H, C1-3 alkyl, and CI-3 haloalkyl, wherein said CI-3 alkyl is optionally substituted with 1 or 2 independently selected R g ; R 5 is selected from H, halo, CN, OR a1 , NR c1 R d1 , C1-6 alkyl, C1-6 haloalkyl, and Cy l , wherein said C1-6 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from halo, CN, OR a1 , C(O)R b1 , C(O)NR c1 R d1 , C(O)OR a1 OC(O)NR c1 R d1 , and NR c1 R d1 ; each Cy l is independently selected from C6-io aryl, 5-14 membered heteroaryl, C3-10 cycloalkyl, and 4-10 membered heterocycloalkyl , each of which is optionally substituted with 1, 2, 3, 4, or 5 substituents independently selected R cy1 ;each R cy1 is independently selected from halo, CN, OR a1 C(O) OR al , OC(O) Rl , OC(O)NR c1 R d1 , NR c1 R d1 , Cy 2 , C1-6 alkyl, C1-6 haloalkyl, and oxo, wherein said C1-6 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from OR a1 , C(O)R b1 , C(O)NR c1 R d1 , C(O)OR a1 , OC(O)R b1 , OC(O)NR c1 R d1 , and NR c1 R a1 - each Cy 2 is independently selected from C6-10 aryl, 5-14 membered heteroaryl, C3-io cycloalkyl, and 4-10 membered heterocycloalkyl , each of which is optionally substituted with 1, 2, or 3 substituents independently selected from R cy2 ;each R cy2 is independently selected from halo, CN, Ci- 6 alkyl, Ci- 6 haloalkyl, OR a1 ,C(O)R b 1, C(O)NR c1 R d1 , C(O)OR a1 , OC(O)R b1 , OC(O)NR c1 R d1 , and N R c1 R d1 , wherein said C1-6 alkyl is optionally substituted with 1, 2, or 3 independently selected R g ; R 4 and R 7 are each independently selected from H, halo, CN, S(O)R b1 ,C(O)N R c1 R d1 , C(O)OR a1 , C1- 3 alkyl, C1- 3 haloalkyl, and Cy 2 , wherein said Ci-3 alkyl is optionally substituted with 1 or 2 independently selected R g ; R 6 is selected from H, halo, CN, OR ai S(O)R b1 , C(O)N R c1 R d1 C(O)OR a1 ,Ci-6 alkyl, C1-3 haloalkyl, Cy 2 , and a reactive electrophilic warhead group, wherein said C1- 6 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from halo, CN, OR a1 , and N R c1 R d1 ; R a1 , R b1 , R c1 , and R d1 are each independently selected from H, C1-3 alkyl, and C1-3 haloalkyl, wherein said C1-3 alkyl is optionally substituted with 1, 2, or 3 substituents independently selected from R g ; and each R g is independently selected from halo, CN, OH, C1-3 alkoxy, C1-3 haloalkoxy, carboxy, C1-6 alkoxycarbonyl , amino, C1-6 alkylamino, and di(C1-6 alkyl)amino , see claim 1. Qiao et al. ‘5 45 claims a compound/composition comprising a compound of formula (II), , or a pharmaceutically acceptable salt thereof; wherein: R1' is halogen; R2' is selected from the group consisting of hydrogen and lower (C1-C8) alkyl; and R3' is hydrogen, halogen, cycloalkyl, cycloheteroalkyl , aryl, or heteroaryl, see claim 1 in column 43 . The difference between instant claims and Qiao et al. ‘545 is that the instant claims are embraced within the scope of Qiao et al. ‘545. Qiao et al. ‘545 compounds/compositions read on the instant compounds of formula (I) in claim 1. One having ordinary skill in the art would find the claim 1 prima facie obvious because one would be motivated to employ the compound/composition of Qiao et al. ‘545 to obtain instant invention. The motivation to make the claimed com p ounds/compositions derived from the known compound/composition of Qiao et al. ‘545 would possess similar activity to that which is claimed in the reference. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT REI TSANG SHIAO whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-0707 . The examiner can normally be reached on FILLIN "Work Schedule?" \* MERGEFORMAT 8:30 am-5:00 pm . 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, Renee Claytor can be reached on FILLIN "SPE Phone?" \* MERGEFORMAT 571- 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /REI TSANG SHIAO/ Rei-tsang Shiao, Ph.D. Primary Examiner, Art Unit 1691 December 15 , 2025
Read full office action

Prosecution Timeline

Aug 21, 2023
Application Filed
Dec 15, 2025
Non-Final Rejection — §102, §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
80%
Grant Probability
45%
With Interview (-35.0%)
2y 3m
Median Time to Grant
Low
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