DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This is a Final Office Action.
Election/Restrictions
Applicant’s election of Group (I) in the reply filed on February 20, 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)).
Group (I), drawn to compounds of formula (IX), 6-(4-Trifluoromethoxy-phenylamino)-pyrimidines, and compositions thereof, embraced by claims 1-6 was elected by Applicant. Applicant has not pointed to any errors in the Examiner’s analysis of the classification of the different inventions. The requirement is still deemed proper and is therefore made FINAL.
Applicant elected the following species:
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and in the phone call with the Examiner on March 17, 2025, Applicant was told claims 1-4 read on the species.
Claims 1, 2 and 4-13 are pending and claims 1, 2 and 4 are under examination. Claims 5 and 6 are withdrawn based on the species election and claims 7-13 are withdrawn based on the restriction requirement.
Claim Objections
The objection to claim 3 because of the “S(O)2NR17NR17” is withdrawn based on the amendments.
Claim Rejections - 35 USC § 112
The rejection of claims 1-3 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the variables R and R2 is withdrawn based on the amendments.
The rejection of claim 3 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the phrase “may be further optionally substituted” is withdrawn based on the amendments.
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
The rejection of claims 1-3 under pre-AIA 35 U.S.C. 102(b) as being anticipated by Chyba et al. (US 20040132786) is withdrawn based on the amendments.
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant in a patent.
Claims 1-3 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Ding et al. (US 20050014753).
The reference teaches the following species:
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, see page 13, Table 1, compound 16.
Thus, claims 1-3 are anticipated by Ding et al.
Double Patenting
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. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); 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) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-4 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10150742. Although the conflicting claims are not identical, they are not patentably distinct from each other because the present claims are drawn to compounds of formula (IX), see below. The claims in the ‘742 patent are drawn to the species in claim 1 of the ‘742 patent, which is shown below on the right-side and methods of intended use of said compound. The only difference between the claimed genus and the cited species is the substitution of the L-A group, the 2-position versus Applicant’s 6-position on the pyrimidine ring. The compounds are positional isomers. Since a methyl group is considered a homolog of hydrogen these compounds are considered equivalent. The MPEP 2144.09 states “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
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Moreover, there is no patentable distinction between compounds and methods of intended use of said compounds.
Applicant traverses the rejection by stating, “Here, the claimed compounds and those claimed in the “742 patent and the reference compound are structurally much more complex than the cyclo- and isohexyl- groups in the Ex parte Mowry case and the ethylene -CH2- groups in the In re Mills case. In addition, the claimed compounds and those in the ‘742 patent are substituted at different positions on a pyrimidine ring, a heteroaryl group containing two hetero atoms which is more structurally complex then the phenyl group in the styrene compound in the Ex parte Mowry case. The Courts found that the isomer and homolog in the Ex parte Mowry and In re Mills cases are not prima facie obvious over structurally similar prior art compounds. Given the structural differences between the claimed compounds and those claimed in the ‘742 patent are more diverse than those from the Ex parte Mowry and In re Mills cases, there is no automatic establishment of a prima facie case.”
This is not persuasive. The cited Mills case provides rationale for homology obviousness, which is not the present issue. The cited Mowery case provided evidence that the cyclohexylstyrene was not prima facie obvious over the prior art isohexylstyrene. No such evidence has been provided in the present case.
The following are several other citations that provide obviousness over positional isomers: In re JONES 74 USPQ 152 that teaches 4-methyl naphthyl-1-acetic acid and 2- methyl naphthyl-1-acetic acid are obvious over a reference teaching 1-methyl naphthyl-2-acetic acid, which is quoted with approval by Ex parte MOWRY AND SEYMOUR 91 USPQ 219; Ex parte Ullyot 103 USPQ 185 that teaches 4-hydroxy-1-oxo-1,2,3,4-tetrahydroisoquinoline is obvious over a reference teaching 4-hydroxy-2-oxo-1,2,3,4-tetmhydroquinoline, "[p]osition isomers are recognized by chemists as similar materials"; Ex parte BIEL 124 USPQ 109 that teaches N-ethyl-3-piperidyl diphenylacetate is obvious over a reference teaching N-alkyl-4-piperidyl diphenylacetate, "[appellant's arguments] do not, in any way, obviate the plain fact that appellant's DACTIL is an isomer of McElvain et al.'s compound. This close relationship places a burden on appellant to show some unobvious or unexpected beneficial properties in his compound in order to establish patentability", and Ex parte Henkel 130 USPQ 474 that teaches 1-phenyl-3-methyl-4-hydroxypyrazole is obvious over a reference that teaches 3-phenyl-5-methyl-4-hydroxypyrazole), "appellants have made no comparative showing here establishing the distinguishing characteristics they allege which we might consider as evidence that the claimed compounds are unobvious. It is clear from In re Henze, supra, and the authorities it cites, that at least this much is necessary to establish patentability in adjacent homologs and position isomers (emphasis added).”
Thus, said claims remain rejected.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNA MOORE whose telephone number is (571)272-9046. The examiner can normally be reached Monday - Friday, 10:00 am to 7:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSANNA MOORE/Primary Examiner, Art Unit 1624