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 Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 5-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Park et al. (WO 2022220600 A1) published 10/20/2022 with a priority date of 10/2021.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claims 1-2 and 5-10, Park teaches a pharmaceutical composition for the treatment of autoimmune diseases, including multiple sclerosis, atherosclerosis, scleroderma, autoimmune hepatitis and a disease caused by undesirable lymphocyte infiltration (relevant to claims 7-10) (para. 30) comprising administration of a crystalline form of 1-[1-chloro-6-(3-chloro-1-isopropyl-1H-indazol-5-ylmethoxy)-3,4-dihydro-naphthalen-2-ylmethyl]-piperidine-4-carboxylic acid or a pharmaceutically acceptable salt thereof and an acceptable carrier(abstract).
Of the acceptable salt Park teaches hydrochloric acid, sulfuric acid, nitric acid, phosphoric acid, hydrobromic acid, hydroiodic acid (relevant to claims 5-6) (para. 21) and the crystalline form having X-ray diffraction pattern spectrum of 8.93±0.2°, 9.17±0.2°, 9.49±0.2°, 13.36±0.2°, 13.81±0.2°, 15.04±0.2°, 16.15±0.2°, 17.41±0.2°, 18.07±0.2°, 18.59±0.2°, 19.56±0.2°, 20.75±0.2°, 21.26±0.2°, 21.70±0.2°, 22.66±0.2°, 24.72±0.2°, 25.65±0.2°, 27.19±0.2° and 31.10±0.2° (relevant to claims 1-2) (para. 17).
Allowable Subject Matter
Claims 3-4 and 11-16 are free of the arts. Closest prior art is of Park et al. (WO 2022220600 A1), which teaches a crystalline form of 1-[1-chloro-6-(3-chloro-1-isopropyl-1H-indazol-5-ylmethoxy)-3,4-dihydro-naphthalen-2-ylmethyl]-piperidine-4-carboxylic acid. The teachings of Park differ from claimed invention of the X-ray diffraction pattern spectrum of claims 3-4.
Conclusion
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MIKHAIL O'DONNEL. ROBINSON
Examiner
Art Unit 1627
/MIKHAIL O'DONNEL ROBINSON/Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
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