D?
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 .
Election/Restrictions
Applicant’s election of Group I, drawn to a compound of Formula (I) and pharmaceutical composition, and a compound of Example 148 having the structure of:
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as the elected compound species of Formula (I) in the reply filed on December 31, 2025 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 § 818.01(a)).
The Examiner noted that the elected compound species of Formula (I) (i.e., a compound of Example 148) above has a compound name of (1S,3R)-3-((1-((6-chloropyridin-3-yl) amino) isoquinolin-6-yl) oxy)-1-methylcyclohexan-1-ol according to page 71 of the instant specification.
Claims 8, 11, 15, 18-19, 22, 24, 27, 30, 33, 35-36 and 39-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 31, 2025.
The Examiner acknowledged that the previous office action mailed on October 31, 2025 has
mistakenly omitted claim 40, drawn to the compound of Formula (I), from Group I. The Examiner acknowledged said claim is included as part of Group I, but is withdrawn as being drawn to a nonelected compound species of Formula (I).
Expansion of Election of Species Requirement
A reasonable and comprehensive search of the elected species conducted by the Examiner determined that the prior art at the time of the present invention was such that it did not anticipate or render obvious the elected compound species of Formula (I):
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. In light of this discovery, the search is expanded to the subject matter of the subgenus of the elected compound species, i.e., the compound having the structure of:
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,
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and
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(compound of Ex No. 33; “N-( 6-chloropyridin-3-yl) isoquinolin-1-amine” in claim 7), such that it does not encompass the full scope of the claims.
Status of Claims
Acknowledgement is made of the receipt and entry of the amendment to the claims filed on October 10, 2023, wherein claims 1, 3, 7-8, 11, 15, 18-19, 22, 24, 27, 30, 33, 35, 39 and 41-42 are amended; claims 2, 9-10, 12-14, 16-17, 20-21, 23, 25-26, 28-29, 31-32, 34 and 37-38 are cancelled; and claims 4, 36 and 40 are unchanged.
Claims 1, 3, 4, 7-8, 11, 15, 18-19, 22, 24, 27, 30, 33, 35-36 and 39-42 are pending.
Claims 8, 11, 15, 18-19, 22, 24, 27, 30, 33, 35-36 and 39-42 are withdrawn.
Claims 1, 3-4, 7 and 41 are under examination in accordance with the elected species along with the expanded compound species sets forth in the Expansion of Election of Species Requirement section above.
Priority
The instant application 18/330,100 filed on June 6, 2023 claims priority to, and the benefits of U.S. Provisional Application No. 63/350,180 filed on June 8, 2022.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/350,180, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, the prior-filed application only discloses the compound of Example 1-35, and that does not include the elected compound species of Formula (I). Therefore, to the extent that the claims are drawn to a compound of Formula (I) that is not a compound of Example 1-35 recites in the prior-filed application, the claims are not entitled to the benefit of the prior-filed application and will receive an effective filing date of June 6, 2023, which is the filing date instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 7, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112 - Improper Markush Grouping
Claims 1, 3-4, 7 and 41 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature.
A Markush claim contains an “improper Markush grouping” if: (1) The species of the Markush group do not share a single structural similarity,” or (2) the species do not share a common use. Members of a Markush group share a "single structural similarity” when they belong to the same recognized physical or chemical class or to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the specification or known in the art to be functionally equivalent (see Federal Register, Vol. 76, No. 27, Wednesday, February 9, 2011, p. 7166, left and middle columns, bridging paragraph).
The members of the improper Markush grouping do not share a substantial feature and/or a common use that flows from the substantial structural feature for the following reasons:
Instant claim 1 recites “[a] compound of Formula (I):
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”; and instant claim 7 recites “[t]he compound of Claim 1 selected from the following: N-(6-chloropyridin-3-yl)-6-( cyclopropylmethoxy) isoquinolin-1-amine… 6-((3-methyl-1H-pyrazol-4-yl) methoxy)-N-(6-methylpyridin-3-yl) isoquinolin-1-amine…”. The Markush grouping of the compounds of Formula (I) are improper, because the compound alternatives do not share a substantial structure feature, and a common use that flows from the substantial structure feature.
For instance, the Markush grouping of the compound of Formula (I) includes a wide variety of
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. Specifically, the claim recites
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can be any fused aryl or fused heteroaryl to form said structures such as acenaphtho[1,2-c] pyridine and imidazo[4,5-c] pyridine. According to Low et al. (US 2016/0260907 A1), the compound of Formula (I)
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, which contains acenaphtho[1,2-c] pyridine, is an organic electroluminescent material (see e.g., abstract). According to Bondy et al. (US 7,648,998 B2), the compound of general formula (A)
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, which contains imidazo[4,5-c]pyridine, is a compound for the treatment or prevention of viral infections (see e.g., abstract). These cited references demonstrate that the compounds containing the pyridine fused to Ring A does not share a common use, thus, it is not apparent that the pyridine ring itself constitute a substantial structural feature essential for modulating voltage-gated potassium channel.
Furthermore, the Markush grouping of the compound of Formula (I) includes a wide variety of
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and
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together to form the structure of:
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. Specifically, instant claim 7 recites compound species shown below: N-(6-(difluoromethyl) pyridin-3-yl)-6-((1-fluorocyclopropyl) methoxy) isoquinolin-1-amine having the structure of:
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(see e.g., Example 43) and (S)-N-(6-chloropyridin-3-yl)-6-(1-methoxyethyl) isoquinolin-1-amin having the structure of:
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(see e.g., p. 68, Ex No. 133). It is noted that these compound species share the structure feature of:
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in common. According to Chen et al. (WO 2007/071348 A1), compound of Example 292 having the structure of
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is an exemplary compound of formula I for inhibiting protein kinase (see e.g., p. 47, Example 16; p. 58, line 1; p. 3, line 8-11), and said compound also contains the same structure feature. The cited reference demonstrates that the compounds containing the structure feature of:
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does not share the same property, thus, it is not apparent that said structure itself constitute a substantial structural feature essential for the desired property of modulating voltage-gated potassium channel.
Each of these findings demonstrates that not all members recited in the Markush grouping belong to the same recognized chemical class and these members do not share a common use. In addition, the alternated compound species fail to share a substantial structural feature that is essential for modulating voltage-gated potassium channel.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1) (emphasis provided).
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 7 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.
Regarding claim 7, the claim recites numerous compound species that fails to further limit the compound of Formula (I) sets forth in claim 1, which it depends upon. For instance, “(1S,3R)-3-((1-((6-chloropyridin-3-yl) amino) isoquinolin-6-yl) oxy)-1-methylcyclohexan-1-ol” is the compound having the structure of:
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(see e.g., p. 71, Ex No. 148), and that includes
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at R3 that fails to further limit said Formula (I). Specifically, claim 1 only recites “R3 is…cycloalkyl” such that said cycloalkyl does not have any substitutions. Same concepts also apply to other compound species recites therein.
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 § 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)(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.
(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, 3-4 and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (WO 2007/071348 A1).
To the extent that the claims are interpretated in light of the compound species recites in claim 7 such that the claimed term “heteroaryl” includes substituted heteroaryl, then the following 35 U.S.C. 102(a)(1) rejection applies.
Chen et al. teaches a compound of Example 292, N3-(5-methyl-1H-pyrazol-3-yl)-N1-pyridin-3-yl-isoquinoline-1,3-diamine, having the structure of:
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is an exemplary compound of Formula I useful for inhibiting protein kinase (see e.g., p. 216, Example 292; claim 9). Chen et al. further teaches a pharmaceutical composition containing one or more compounds according to Formula I together with pharmaceutically acceptable carriers, including a tablet formulation shown below:
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(see e.g., p. 59, line 18-20; page 62). Please note the lactose anhydrous DTG taught by Chen et al. is a pharmaceutically acceptable excipient.
In the present case, the compound of Example 292 taught by Chen et al. is a compound of Formula (I) instantly claimed:
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, wherein m is 1; n is 0;
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is
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; R1 is hydrogen; R2 is hydrogen;
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is
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; R4 is
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(R4 is -R9-N(R6)2, wherein R9 is a direct bond, one R6 is hydrogen and another R6 is heteroaryl); and therefore, the tablet formulation taught by Chen et al. also anticipates the claimed invention.
Claims 1, 3-4 and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by García Collazo et al. (WO 2016/120808 A1), as evidenced by CAS Registry Number 1974273-18-1 (Entered STN Registry on August 17, 2016).
García Collazo et al. teaches N5-(7-chloroisoquinolin-1-yl)pyridine-2,5-diamine is an exemplary compound of formula (IA) (see e.g., claims 1 and 18). García Collazo et al. further teaches a pharmaceutical composition, comprising the compound of formula (IA), or a pharmaceutically acceptable salt or solvate thereof, and at least one pharmaceutically acceptable excipient (see e.g., claim 20).
In the present case, the N5-(7-chloroisoquinolin-1-yl)pyridine-2,5-diamine taught by García Collazo et al. is a compound having the structure of:
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, as evidenced by CAS Registry Number 1974273-18-1. Said compound is a compound of Formula (I) instantly claimed:
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, wherein
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is
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; R2 is -NH2 (R2 is -R9-N(R6)2, wherein R9 is a direct bond; each R6 is hydrogen); R1 is hydrogen; m is 0; n is 1; R3 is Cl (R3 is halo);
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is
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; and therefore, the pharmaceutical composition taught by García Collazo et al. also anticipates the claimed invention.
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 1, 3-4 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over García Collazo et al. (WO 2016/120808 A1).
García Collazo et al. teaches a compound of Example 37 having the structure of:
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is an exemplary compound of formula (IA) useful for treating or preventing a condition associated with the alteration of the activity of [Symbol font/0x62]-galactosidase in a patient (see e.g., p. 76, Example 37; abstract). García Collazo et al. further teaches a pharmaceutical composition, comprising the compound of formula (IA), or a pharmaceutically acceptable salt or solvate thereof, and at least one pharmaceutically acceptable excipient (see e.g., claim 20). García Collazo et al. further teaches the compound of formula (IA)
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, wherein each of A2 is independently selected from the group consisting of nitrogen, C(R3A) and C(NH2); each one of R3A is independently selected from, inter alia, hydrogen (see e.g., claim 1).
The difference between the compound of Example 37 of García Collazo et al. and the claimed compound of Formula (I) lies on the position of nitrogen atom in the pyridine ring shown below:
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. It would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to select compound of Example 37 of García Collazo et al., and then modify the position of nitrogen atom in the pyridine ring to arrive at the claimed invention. One would have been motivated to do so, because García Collazo et al. teaches each of A2 (
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) can be nitrogen and C(R3), wherein R3 includes a hydrogen, to arrive at a compound of formula (IA). One would have a reasonable expectation of success to arrive at the claimed invention, because one would have reasonably expected that the modified compound of Example 37 of García Collazo et al., which changes the position of nitrogen atom from one A2 position to another A2 position (
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) would have successfully arrive at the compound of formula (IA) useful for alternating the activity of [Symbol font/0x62]-galactosidase; and therefore, said modified compound of Example 37 can successfully be combine with a pharmaceutically acceptable excipient to arrive at a pharmaceutical composition.
Therefore, the claimed invention is prima facie obvious to one of ordinary skill in the art at the time the application was filed.
Claims 1, 3-4, 7 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over García Collazo et al. (WO 2016/120808 A1), in view of Patani et al. (Chem. Rev., 1996. Vol. 96, 8: 3147-3176), as evidenced by CAS Registry Number 1974273-18-1 (Entered STN Registry on August 17, 2016).
García Collazo et al. teaches N5-(7-chloroisoquinolin-1-yl)pyridine-2,5-diamine is an exemplary compound of formula (IA) (see e.g., claims 1 and 18). García Collazo et al. further teaches a pharmaceutical composition, comprising the compound of formula (IA), or a pharmaceutically acceptable salt or solvate thereof, and at least one pharmaceutically acceptable excipient (see e.g., claim 20). Please note the N5-(7-chloroisoquinolin-1-yl)pyridine-2,5-diamine taught by García Collazo et al. is a compound having the structure of:
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, as evidenced by CAS Registry Number 1974273-18-1.
García Collazo et al. does not teach the compound of Formula (I) recites in claim 7.
However, García Collazo et al. further teaches the compound of formula (IA)
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, wherein A3 is selected from the group consisting of nitrogen, C(R3A) and C(NH2); R3A is selected from the group consisting of, inter alia, halogen; R11, R12 and R13 are each independently selected from the group consisting of, inter alia, hydrogen and halogen (see e.g., claim 1). García Collazo et al. further teaches the terms “halogen” refers to -F, -Cl, -Br or -I (see e.g., p. 26, line 11). García Collazo et al. further teaches the compound is useful for treating or preventing a condition associated with the alteration of the activity of [Symbol font/0x62]-galactosidase in a patient (see e.g., p. 5, line7-11; abstract).
Patani et al. further teaches bioisosterism represents one approach used by the medicinal chemist for the rational modification of lead compounds into safer and more clinically effective agents (see e.g., “introduction” section on p. 3147). Patani et al. further teaches a group of bioisosteres elicit similar biological activity, and have been classified as either classical or nonclassical, wherein the classical bioisosteres are a series of replacements defined by Grimm’s Hydride Displacement Law and Erlenmeyer’s definition of isosteres (see e.g., p. 3148-3149). Patani et al. further teaches exemplified the replacement of chlorine with isosteres from Grimm’s Hydride Displacement Law shown below:
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, and teaches substitution at the 6-position with monovalent isosteres (-NH2, -CH3, -Cl) results in
analogues with similar biological activity (see e.g., p. 3153, left column, 3rd paragraph).
In the present case, the difference between the N5-(7-chloroisoquinolin-1-yl)pyridine-2,5-diamine of García Collazo et al. and the expanded compound species of Formula (I) is that the prior art teaches C(NH2) rather than C(Cl) at A3, and teaches Cl rather than hydrogen at R13 of formula (IA) shown below (see shaded):
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.
It would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to select the N5-(7-chloroisoquinolin-1-yl)pyridine-2,5-diamine of García Collazo et al., and then modify said compound by substituting Cl with a hydrogen at R13, and then substituting -NH2 with -Cl on the carbon at A3 based on the Grimm’s Hydride Displacement Law taught by Patani et al. to arrive at the claimed invention. One would have been motivated to do so, because García Collazo et al. teaches R13 can be hydrogen or halogen to arrive at a compound of Formula (IA) useful for treating or preventing a condition associated with the alteration of the activity of [Symbol font/0x62]-galactosidase; and Patani et al. teaches -NH2 and -Cl are monovalent isosteres that can result in analogues with similar biological activity. One would have a reasonable expectation of success to arrive at the claimed invention, because one would have reasonably expected that the N5-(7-chloroisoquinolin-1-yl)pyridine-2,5-diamine of García Collazo et al. modified in view of the Formula (IA) by substituting Cl with a hydrogen at R13 , and then substituting amine with -Cl on the carbon at A3 in view of Patani et al. would have successfully arrive at the compound that is similarly useful for alternating of the activity of [Symbol font/0x62]-galactosidase.
Therefore, the claimed invention is prima facie obvious to one of ordinary skill in the art at the time the application was filed, absent factual evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Chihyi Lee whose telephone number is (571)270-0663. The examiner can normally be reached Monday - Friday 8:30 am - 5:00 pm EST.
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/CHIHYI LEE/Examiner, Art Unit 1628 /JEAN P CORNET/Primary Examiner, Art Unit 1628