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 Status
Claims 1-19 are pending in the application. Claims 8-14 and 16-19 are withdrawn. Claims 1 – 7 and 15 are currently examined.
Election/Restrictions
Applicant’s election without traverse of claims 1-7 and 15 in the reply filed on April 10, 2026 is acknowledged.
Claims 8-14 and 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 10, 2026.
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, 2 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okamoto et al. (JP-2016175873-A, Published 2016-10-06).
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Okamoto et al. discloses a biphenyl structure that reads on Applicant’s claim 1 and 5. They specifically disclose biphenyl compounds that can be used in pharmaceutical compositions (paragraphs [0002] and [0067]) and compounds such as 4'-(nonyl)oxy-4-biphenylcarboxylic acid (0-19) .
In this structure (as mapped to Applicant’s compound in claim 1 and 5) R1, R2, R3, and R4 are hydrogens and R5 is COOH. The disclosure of the claimed structure by Okamoto et al. therefore anticipates Applicant’s compound in claims 1 and 5. Furthermore, because the compound is taught in the prior art it necessarily has the property of being a phosphotyrosyl phosphatase 2 inhibitor and thus anticipates Applicant’s claim 2.
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.
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.
Claims 3, 4, 6, 7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (JP-2016175873-A, Published 2016-10-06) as applied to claims 1, 2 and 5 above, and in view of Agazie et al. (US-20170166510-A1, Published 2017-06-15).
The claimed compounds of claims 3, 4, 6, 7 and 15 differ from those disclosed by Okamoto et al. in the specific selection of substituents and/or side chain configurations within the biphenyl scaffold.
Agazie et al. teaches compounds useful as inhibitors of Src homology phosphotyrosyl phosphatase 2 (SHP2) for use as anti-cancer agents, including the compound 4,4'-( 4'-Carboxy)-4 nonyloxy-[1,1 '-biphenyl]-3,5-diyl)dibutanoic acid (CNBDA) and derivatives (paragraphs [0004], and [0022]). CNBDA is described as having a biphenyl core substituted with a carboxylate group, two butyric acid side chains, and a nonyloxy substituent (paragraph [0030]). Agazie et al. further teaches that this compound may be systematically modified to generate derivative compounds, including by varying the length of the acid side chains, replacing carboxylic acid groups with other functional groups, and modifying the alkyl chain substituent length (paragraphs [0024] and [0032]). Agazie et al. additionally provides generalized chemical formulas encompassing such variations in substituents and chain lengths, thereby teaching the modifiability of the scaffold (paragraphs [0025] and [0026]). Furthermore Agazie et al. discloses pharmaceutical compositions comprising such compounds and pharmaceutically acceptable carriers (paragraphs [0027] and [0028]).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time to modify the biphenyl compounds disclosed by Okamoto et al. by incorporating substituent side chain variations as taught by Agazie et al. to obtain the claimed compounds. Such modifications would have been routine based on the disclosures of Agazie et al. due to the suggestion of varying length of the acid side chains, replacing carboxylic acid groups with other functional groups, and modifying the alkyl chain substituent length (paragraphs [0024] and [0032]) and would have resulted in predictable variants of the biphenyl scaffold with a reasonable expectation of success.
Conclusion
No claims are allowed in this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAJESH JAIPRASHAD whose telephone number is (571)272-1049. The examiner can normally be reached Monday-Friday 8AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAJESH JAIPRASHAD/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
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