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
Status of the Claims
Claims 1-14 are pending and are examined on their merits.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 120 is acknowledged. Applicant has complied with all conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 based on the date of the provisional application 63/419,049 filed on October 25th 2022.
Claim Interpretation
Claims 7, 12, and 14 are directed towards the compound of claim 1, 8, and 13, respectively, disposed in a pharmaceutically acceptable carrier. As this is not a common term of art, each of these claims will be interpreted as “A pharmaceutical composition comprising the compound of claim ___ and a pharmaceutically acceptable carrier.”
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamenecka (US 2012/0309757 A1).
Claims 1-6 are directed towards a compound of the structure:
PNG
media_image1.png
140
270
media_image1.png
Greyscale
.
Kamenecka teaches the compound,
PNG
media_image2.png
107
305
media_image2.png
Greyscale
(Kamenecka, pg. 240, claim 13).
This compound is anticipatory of claims 1-6.
Kamenecka additionally teaches the compound in a pharmaceutical composition (Kamenecka, pg. 272, claim 14), anticipating claim 7.
Claim Rejections - 35 USC § 103
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.
Claims 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kamenecka (US 2012/0309757 A1) in view of Brown (Brown, Bioisosteres in Medicinal Chemistry, 2012).
Claims 8-11 and 13 are directed towards a compound of the structure,
PNG
media_image3.png
199
225
media_image3.png
Greyscale
.
Kamenecka teaches the compound,
PNG
media_image2.png
107
305
media_image2.png
Greyscale
(Kamenecka, pg. 240, claim 13),
which differs from applicant’s in just 2 locations:
PNG
media_image4.png
107
305
media_image4.png
Greyscale
PNG
media_image5.png
199
225
media_image5.png
Greyscale
.
One of ordinary skill in the art would have a reasonable expectation of success in developing applicant’s compound from Kamenecka’s compound because each of these substitutions are known bioisosteric replacements in the field of drug design. See Brown (Brown, pg. 17) who teaches the commonality both of the replacement of hydrogen with methyl and the replacement of hydroxides with OR groups such as OCH3. As one of ordinary skill in the art would have had a reasonable expectation of success in performing these replacements on Kamenecka’s compound to form applicant’s compound, claims 8-11 and 13 are prima facie obvious.
Kamenecka additionally teaches the compound in a pharmaceutical composition (Kamenecka, pg. 272, claim 14), rendering claims 12 and 14 prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anthony Seitz whose telephone number is (703)756-4657. The examiner can normally be reached 7:30 AM ET - 5:00 PM ET M-F.
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, Jeffrey Lundgren can be reached at (571)272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.J.S./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
Prosecution Insights