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 .
Priority
This application is a 371 of PCT/CN2022/087947 (04/20/2022)
and claims foreign priority to CHINA 202110432744.0 (04/21/2021).
Election/Restrictions
Applicant's election with traverse of Group I, claims 1, 8-10, 14, 20-25, in the reply filed on 3/6/26 is acknowledged. The traversal is on the ground(s) that all claims depend from claim 1 and constitute a special technical feature. This is not found persuasive because all claims do not depend from claim 1, i.e. claim 10, and as detailed in the following prior art rejection the claims are not a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Applicant also elected the following species:
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168
212
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corresponding to claim 1’s formula (V) where R1 is pyrrolidone, Ar is 4-fluorophenyl, R5 is methyl, and determined to read on claims 1, 8-10, 14, 20-25.
As detailed in the following rejections, the generic claim encompassing the elected species was not found patentable. Therefore, the provisional election of species is given effect, the examination is restricted to the elected species only, and claims not reading on the elected species are held withdrawn. MPEP 803.02; Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App. lnt. 1987).
Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection through amendment, the amended Markush-type claim will be reexamined to the extent necessary to determine patentability of the Markush-type claim. See MPEP 803.02.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1, 8-9, 14, 20-25 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1’s Formula (I) has variables A, R2, R3, R’, and n which are not defined in the claim. Claim 25 use the language “the aryl” and “the heteroaryl” which lacks an unambiguous antecedent basis due to multiple such groups in claim 1 from which the claim depends.
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hoveyda et al. (US20150232471, “Hoveyda”) in view of Hoveyda et al. (US20150315199, “Hoveyda’199).
Claim 10 is to a genus of species including the following compound 2:
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161
228
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.
Hoveyda teaches nk-3 receptor selective antagonist pharmaceutical compounds (claim 12, p 45) including the species compound 5 now known as fezolinetant (arrow emphasis added):
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210
311
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Hoveyda’s compound 5 differs from instant claim compound 2 by a nitrogen vs. a carbon at the arrow annotated position above.
Hoveyda’199 teaches nk-3 receptor selective antagonist pharmaceutical compounds including compound 212, 157 (p. 34),
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167
344
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210
379
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compound 259 (Table 1, p. 38; Table 3, p69 “+”), compound 166 (+++):
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163
376
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404
203
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as well as the genus of (It):
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300
311
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.
One of ordinary skill following the teaching of Hoveyda would have also considered the teaching of Hoveyda’199 which share the identical utility and the teaching of the modified variable ring at the annotated arrow position of compound 5. One of ordinary skill in the art would have had a reasonable expectation of success in the modification because of Hoveyda’199’s teaching of success with structurally similar compounds having the position changed from a nitrogen to a carbon as well as a genus encompassing the claimed compound. The level of skill in the art is very high such that one of ordinary skill in the art would consider routine the combination of elements from the teaching of the art. One of ordinary skill in the art would have recognized that the results of the combination would be predictable due to the well-known nature and optimizations routinely performed in the art. Thus, one of ordinary skill in the art would have arrived at the invention as claimed before the effective filing date with a reasonable expectation of success.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT H HAVLIN whose telephone number is (571)272-9066. The examiner can normally be reached 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached at (571) 270-5293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT H HAVLIN/Primary Patent Examiner, Art Unit 1626
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