Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Priority and Status of the Claims
1. This application is a CON of 18/069,099 12/20/2022 ABN, which is a CON of 17/001,205 08/24/2020 ABN, which is a CON of 16/670,898 10/31/2019 ABN, which is a CON of 16/020,270 06/27/2018 ABN, which is a CON of 15/693,022 08/31/2017 PAT 10045983, which is a DIV of 14/943,552 11/17/2015 PAT 9782405, which is a CON of 14/479,529 09/08/2014 PAT 9238655, which is a CON of 14/207,966 03/13/2014 PAT 8921353, which is a DIV of 13/667,133 11/02/2012 PAT 8716274, which has PRO 61/555,393 11/03/2011
2. Claims 28-35 are pending in the application.
Claim Rejections - 35 USC § 112
3. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 28-35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 28-35 independently recite the limitation “a compound of formula 116a”, and “a compound of formula 191d” without a chemical name or formula is ambiguous and indefinite. It is unclear what the scope of the limitation “a compound of formula 116a”, and “a compound of formula 191d” are. Claims must stand alone to define invention, and incorporation into claims by express reference to specification is not permitted, are properly rejected under 35 U.S.C. 112 (b), see Ex parte Fressola, No. 93-0828. Incorporation of the “a compound of formula 116a”, and “a compound of formula 191d” with a chemical name or formula into claims 28-35 respectively would obviate the rejection.
4. 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
5. 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 non-obviousness.
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(f) or (g) prior art under 35 U.S.C. 103(a).
Claims 28-35 rejected under 35 U.S.C. 103(a) as being obvious over Crawford et al. US 8,716,274.
Applicants claim a method of preparing a compound of formula 116a, the process comprising combining compound 191d with cesium carbonate and 3,5-dibromoisonicotinaldehyde to produce compound 1 16a. Dependent claims 29-34 further limit the scope of methods, i.e., reactants, reaction temperature, catalyst and separation methods.
Applicants claim a composition comprising a compound of formula 116a, see claim 35.
Determination of the scope and content of the prior art (MPEP $2141.01)
Crawford et al. ‘274 discloses a process of making compound 116a in Figure 16, i.e.,
PNG
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356
788
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Greyscale
, and Example 116a in column 217. Crawford et al. ‘274 processes read on the instant claims 28-34.
Crawford et al. ‘274 discloses a compound of formula 116a, see Example 116a in
column 217. It is pharmaceutical industry routine to making a composition comprising
the compound of formula 116a.
Determination of the difference between the prior art and the claims (MPEP
$2141.02)
The different between instant claims and Crawford et al. ‘274 is that the instant claim is embraced within the scope of Crawford et al. ‘274. Crawford et al. ‘274 reads on the instant processes and compositions in claims 28-35.
Finding ofprima facie obviousness-rational and motivation (MPEP §2142-2143)
One having ordinary skill in the art would find the claim 28-35 prima facie obvious because one would be motivated to employ the processes and compositions of Crawford et al. ‘274 to obtain instant invention.
The motivation to make the claimed compounds/compositions derived from the known processes and compositions of Crawford et al. ‘274 would possess similar activity to that which is claimed in the reference.
Conclusion
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1629
November 21, 2025