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 without traverse of Group I, claims 1-12, drawn to a compound of Formula I, and a compound having the structure of:
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as recited in claim 11 as the elected compound species of Formula I in the reply filed on December 2, 2025 is acknowledged.
Claims 5-6, 9-10, and 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim.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 2, 2025.
Status of the Claims
Acknowledgement is made of the receipt and entry of the amendments to the claims filed on January 26, 2024, wherein claims 1-11, 14 and 16 are unchanged; claims 12-13, 15 and 17-18 are amended; and claims 19-21 are canceled.
Claims 1-18 are pending. Claims 5-6, 9-10, and 13-18 are withdrawn.
Claims 1-4, 7-8 and 11-12 are under examination in accordance with the elected compound species along with the expanded compound species.
Priority
The instant application 18/480,499 filed on October 3, 2023 claims priority to, and the benefits of U.S. Provisional Application No. 63/378,354 filed on October 4, 2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 7, 2025 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 § 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 1-4, 7-8 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Fu et al. (WO 2018/198079 A1), in view of Klein et al. (Chemistry, 2021. Vol. 27(68): 17203-17212).
Fu et al. teaches a compound 2.23 having the structure of:
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is an exemplary compound of formula (I) useful for treating viral infections (see e.g., [0049], Compound 2.23; abstract). Fu et al. further teaches said compound 2.23 is a racemic product (see e.g., [00291]). Fu et al. further teaches a pharmaceutical composition comprising the compound of formula (I) admixed with at least one pharmaceutically acceptable carrier (see e.g., [0051]). Fu et al. further teaches the compound of formula (I)
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, wherein R2 is independently selected at each occurrence from, inter alia, -OR3; R3 is a C1-C4 alkyl that is optionally substituted with one to three groups selected from, inter alia, -COOR; n is 0, 1, or 2; R is independently selected at each occurrence from H and C1-C3 alkyl (see e.g., [009]).
Fu et al. does not teach the elected compound species.
Klein et al. teaches in principle, higher alkyl chain lengths will increase lipophilicity
and hence the amount of complex embedded in the lipid bilayer (see e.g., p. 17207, right column, line 34-37).
In the instant case, Fu et al. clearly teaches the racemic mixture of compound 2.23 as an exemplary compound of formula (I); and further teaches R3 of the -OR3 moiety at R2 of formula (I) can be C1-C4 alkyl that is substituted with one -COOR, wherein R is hydrogen or C1-C3 alkyl. The difference between the compound 2.23 of Fu et al. and the claimed compound of Formula I is that the prior art compound has –O(CH2)– at R2 of formula (I) rather than –O(CH2)7–, and said R2 is substituted with –COOH– rather than –COO(C4 alkyl)– 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 compound 2.23 of Fu et al., and modify said compound by replacing the -OH- substituent with -COO(C1-C3 alkyl), and then changing the length of alkyl chain at the R2 of formula (I) taught by Fu et al. to arrive at the elected compound species instantly claimed. One would have been motivated to do so, because Klein et al. teaches higher alkyl chain lengths will increase lipophilicity of the chemical compound in principle. Given that the difference between the prior art compound and the claimed compound lies on the length of the alkyl chain at R2 of formula (I) of Fu et al. (see shaded portions in the figure above), these compounds are common derivatives known as homologs. According to MPEP 2144.09 (II) and (III), “[c]ompounds which are…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)” and “[p]rior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979)”. One of ordinary skill in the art would have a reasonable expectation of success to arrive at the claimed invention, because one would have reasonably expected that the modified compound 2.23 of Fu et al. in view of Klein et al., which is a homolog of the compound 2.23, would successfully exert anti-viral activity useful for the treatment of viral infection; and therefore, said compound can successfully be combined with a pharmaceutically acceptable carrier to arrive at a pharmaceutical composition without any appreciable loss of activity.
Please note the fact that Fu et al. teaches the racemic mixture of compound 2.23 renders
obvious the limitation of
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recites in the Formula I instantly claimed.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L. Clark can be reached at (571) 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHIHYI LEE/Examiner, Art Unit 1628 /JEAN P CORNET/Primary Examiner, Art Unit 1628