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 1-30 are pending. Claims 21-27 are withdrawn from further consideration as being directed towards a nonelected invention. Claims 2-4, 7-10, and 13-18 are withdrawn from further consideration as being directed towards nonelected species until a generic claim has been found allowable. Claims 1, 5, 6, 11, 12, 19, 20, and 28-30 are examined on their merits.
Claim Objections Overcome by Amendment
Applicant’s amendments to claims 29 and 30 in the response filed on April 16th 2026 are acknowledged. Claims 29 and 30 no longer depend on the multiply dependent claim 28, and are thus in proper multiple dependent form. The objections over claims 29 and 30 are thereby withdrawn.
35 U.S.C. § 102 Rejections Overcome by Amendment
Applicant’s amendments in the response filed on April 16th 2026 are acknowledged. Applicant has amended the claims to no longer allow a morpholine ring in the R3-R4 combination ring. As such a morpholine ring was recited by Rahm, Rahm’s compound is not anticipatory of the claims, and all 102 rejections are withdrawn.
35 U.S.C. § 101 Rejections Maintained
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The rejection of claim 30 under 35 U.S.C. 101 as being directed towards a natural phenomenon without significantly more is maintained.
Applicant argues in the response filed on April 16th 2026 that applicant’s compounds are not found in nature and thus claim 30 is not a natural phenomenon. However, as written, claim 1, upon which claim 30 depends, is not considered novel (see the below 102 rejections). While claim 1 has been rejected below by a specific compound, the full scope is very broad, encompassing compounds as varied as 4-(dimethylamino)pyridine and N,N-dimethylmelamine. Thus, while the genus remains broad, it cannot be stated concretely that the compounds of claim 1 are not naturally occurring.
Furthermore, claim 30 is not directed towards a practical application, such as the method of treatment described in applicant’s response (referenced in MPEP § 2106.04(b)(I), but is only directed towards the observation of a naturally occurring correlation (i.e. a particular interaction with an E3 ligase of a cell).
Thus, applicant’s arguments are found not persuasive and the 101 rejection over claim 30 is maintained.
35 U.S.C. § 101 Rejections Reiterated
Claim 30 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claim recites the inhibition of E3 ligase in cells with the compound of claim 1. This judicial exception is not integrated into a practical application because only the contact of the cells with the compound (i.e. a natural phenomenon) and the results of the contact (the inhibition of E3 ligase) is recited. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the method does not recite a patient population or an administration step but merely the contact of cells with the compound and results of said contact.
Claim Rejections - 35 USC § 102 Rejections Necessitated by Amendment
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, 5, 6, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2427816-67-7 (Entered CAS on June 18th 2020):
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435
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.
Claims 1, 28, and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheon (WO 2009/028891 A2 published on March 5th 2009).
Claim 1 is directed towards a compound of general formula (I):
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,
which is anticipated by Cheon’s
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(Cheon, pg. 19, Example 11).
Claim 28 is directed towards a pharmaceutical composition comprising the compound of claim 1. Cheon teaches a pharmaceutical composition of the compound (Cheon, pg. 38, claim 7), anticipating claim 28.
Claim 29 is directed towards a method of treating cancer comprising administration of the compound of claim 1. Cheon teaches the treatment of cancer with the compound (Cheon, pg. 38, claim 7), anticipating claim 29.
Allowable Subject Matter
Claims 19-20 are allowed.
Applicant has developed compounds of general Formula (I),
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.
These compounds act as inhibitors of E3 ligase and are therefore useful in the treatment of various cancers. While compounds are found in the art that are anticipatory of applicant’s generic structure (see the above 102 rejections of claims 1, 5, 6, 11, 12, and 28-29, applicant’s particular chemical structures as described in claims 19-20 are free of the art and would not be predictable from the art.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/A.J.S./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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