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 .
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.
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) 25-27, 33, 36-40, 42, 44, 67-69 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bobko et al (WO 2012/149102).
Scope of prior art
Bobko teaches compounds 6, 7 and 25 (see examples 6, 7 and 25 on pages 84 and 94). Bobko also teaches pharmaceutical composition comprising the compound and a method of treating cancer including glioblasomas (pages 104, 105 claims 12-14).
Ascertaining the difference
The compounds of Bobko differ from the currently claimed compound in that R2 and R2a as defined in the current claims are both Hydrogen atoms in Bobko, while in current claims R2 is a methyl group (C1-C4 alkyl).
Obviousness
A person of ordinary skill in the art, prior to the earliest effective filing date of the current application, would have found it obvious to modify compounds of Bobko by preparing compound where a hydrogen in the R2 position is replaced with a methyl group. The derivatives prepared in as a result of such substitution would be expected to retain the biological properties of the parent compound and to find utility in a method of treating cancer with efficacy similar to the parent compound. It is well established that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Lincoln, 126 U.S. P.Q. 477, 51 U.S.P.Q. 40 (C.C.P.A. 1942); In re Druey, 319 F.2d 237, 138 U.S.P.Q. 39 (C.C.P.A. 1963); In re Lohr, 317 F.2d 388, 137 U.S.P.Q. 548 (C.C.P.A. 1963): In re Hoehsema, 399 F.2d 269, 158 US.P.Q. 598 (C.C.P.A. 1968); In re Wood, 582 F.2d 638, 199 U.S.P.Q. 137 (C.C.P.A. 1978); In re Hoke, 560 F.2d 436, 195 U.S.P.Q. 148 (C.C.P.A. 1977); Ex parte Fauque, 121 U.S.P.Q. 425 (P.O.B.A. 1954); Ex parte Henkel. 130 U.S.P.Q. 474. (P.O.B.A. 1960).
Objection to claims
Claims 28-32, 34-35, 41, 43 and 45 are objected to as being dependent on a rejected claim but would be allowable in independent format. Closest art is Bobko et al (see above) which teaches similar compounds but does not suggest the substitution pattern of the objected to claims.
Conclusion
Claims 25-45 and 67-69 are pending
Claims 28-32, 34-35, 41, 43 and 45 are objected to
Claims 25-27, 33, 36-40, 42, 44, 67-69 are rejected
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YEVGENY VALENROD whose telephone number is (571)272-9049. The examiner can normally be reached Mon-Fri 9am-5pm.
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/YEVGENY VALENROD/Primary Examiner, Art Unit 1628