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 .
This is the first action on the merits.
Election/Restrictions
Applicant's election without traverse of Group (I) in the reply filed on February 22, 2026 is acknowledged. Group (I), drawn to compounds of formula (I), compositions thereof, embraced by claims 13-16 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 elects the following species:
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, and indicates claims 13-16 read on said species.
Claims 13-18 are pending and claims 13-16 are under examination. Claim 18 is a new claim, which is withdrawn based on the species election. Claim 17 is withdrawn based on the restriction requirement.
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) (PROVISIONAL) or 119(a) (FOREIGN) or under 35 U.S.C. 120 (CONT/CIP), 121(DIV), or 365(c) (WO) is acknowledged. Applicant still has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(a) as follows: The later-filed application must be an application for a patent application (the parent for an invention which is also disclosed in the prior application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). The disclosure of the prior-filed foreign applications, Application No. 201401619334.7 and 201510152615.0, fail to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for all claims of this application. A translation has not been made of record for neither foreign application. Thus, the effective filing date of the present claims 13-18 remains the date of November 5, 2015, the international filing date.
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 § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 13-16 are rejected under AIA 35 U.S.C. 103(a) as being unpatentable over Wei et al. (WO 2016029839, cited on the IDS) in view of Huang et al. (WO 2015195228, cited on the IDS).
The present application claims the following species, wherein R1= H, R5= 1-methyl-indol-3-yl, R2= methyl, X= N(CH3), R4= (CH2)2-3-OH-pyrroldinyl and Y= NHC(O):
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, see claim 15.
The reference teaches the following species, wherein R1= H, R5= 1-methyl-indol-3-yl, R2= methyl, X= N(CH3), R4= (CH2)2-pyrroldinyl and Y= NHC(O):
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, see page 199, second row.
The only difference between the claimed compound and the cited compound is the substitution on the pyrrolidinyl ring, H versus Applicant’s 3-OH.
Huang et al. teaches similar compounds with the same utility, see below:
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, see page 341, and
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, see page 337.
The genus on page 4 of the Huang reference teaches a 3-OH at this position, see the definition of R5 on page 5, and R12 on page 6.
The compositions are taught in the abstract and on page 201, claim 8.
Therefore, it would be obvious to take the compound taught by Wei et al. and apply the substitution as taught by Huang et al.
Thus, said claims are rendered obvious over Wei et al. and Huang et al.
The search was extended to apply the following rejection.
Claims 13-16 are rejected under AIA 35 U.S.C. 103(a) as being unpatentable over Wei et al. (WO 2015127872).
The present application claims the following species, wherein R1= H, R5= 1-methyl-indol-3-yl, R2= methyl, X= N(CH3), R4= (CH2)2-azetidinyl and Y= NHC(O):
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, see claim 15.
The reference teaches the following species, wherein R1= H, R5= 1-methyl-indol-3-yl, R2= methyl, X= N(CH3), R4= (CH2)2-pyrroldinyl and Y= NHC(O):
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, see page 199, second row.
The only difference between the claimed compound and the cited compound is the size of the nitrogen ring at R4, 5-membered versus Applicant’s four membered ring. The rings are considered homologues and 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).
The compositions are taught in the abstract and on page 201, claim 8.
Thus, said claims are rendered obvious over Wei et al.
Conclusion
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