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 .
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-19, in the reply filed on 03 Feb 2026 is acknowledged. Claims 25-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter.
With regard to the elected species, Applicant’s election without traverse of the compound set forth in Example 22A, which is (2R)-N-((R or S)-(3-chloro-4-(trifluoro-methoxy)phenyl)(5-chloro-6-(trifluoro-methyl)pyridin-3-yl)methyl)-2-methyl-3-oxopiperazine-l-carboxamide, and has the following structure:
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The elected species has been examined, and no prior art was identified.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following elected claims are generic with respect to the elected species: claims 1-17 and 19. However, no generic claim has been found allowable. See rejections below.
Because claim 18 encompasses both elected species and non-elected species, the full scopes of claim 18 has not been examined, and claim 18 has been withdrawn from consideration. Upon the allowance of a generic claim from which claim 18 depends or otherwise includes all the limitations of an allowed generic claim, claim 18 will be rejoined and additional non-elected species of claim 18 will be considered.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 29 March 2024, 03 Jan 2025, 03 July 2025, 22 July 2025 are in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. Each IDSs was considered. A signed copy of form 1449 is enclosed herewith.
Priority
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Claim Interpretation
The examiner has interpreted Formula I to exclude from its scope any compound in which A and B are both aryls. Furthermore, reviewing recited variables that may be attached to the piperazine ring of Formula I, the examiner has interpreted Formula I to exclude from its scope any compound in which the piperazine ring is part of a bicyclic ring or polycyclic ring. To the extent that either or both of the above interpretations are correct, please confirm. To the extent that either or both of the above interpretations are incorrect, please clarify.
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)(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 1-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS RN 1427971-52-5 (entered date: 11 Apr 2013; listed on IDS filed 03 July 2025). CAS RN 1427971-52-5 discloses 1-Piperazinecarboxamide, N-[(3-chlorophenyl)-2-pyridinylmethyl]-3-oxo-, which has the following structure:
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CAS Registry No. 1427971-52-5 is embraced by Formula I, wherein:
Ring A is aryl (phenyl), substituted with one Ra,
where Ra is a halogen;
Ring B is unsubstituted heteroaryl (pyridyl); and
Each of R1-R9 is hydrogen.
CAS RN 1427971-52-5 entered STN on 11 Apr 2013. The structure entered the CAS Chemical Library with Enamine listed as the supplier. CAS RN 1427971-52-5 is included on the CHEMCATS file accessible through STN.
In addition to anticipating claim 1, the prior art compound set forth in CAS RN 1427971-52-5 anticipates claims 2-17.
Claims 1-10 and 12-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem CID 119071689 (create date: 03 June 2016; listed on IDS filed 03 July 2025). PubChem CID 119071689 discloses 4-Ethyl-N-[(4-methoxyphenyl)(pyridin-4-YL)methyl]-3-oxopiperazine-1-carboxamide, which has the following structure:
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PubChem CID 119071689 is embraced by Formula I, wherein:
Ring A is aryl (phenyl), substituted with one Ra,
Ra is option (25), “-(CH2)p-OC1-6alkyl”, wherein p is 0 (methoxy);
Ring B is unsubstituted heteroaryl (pyridyl);
R1 is -C1-6alkyl (ethyl); and
Each of R2-R9 is hydrogen.
In addition to anticipating claim 1, the prior art compound set forth in PubChem CID 119071689 anticipates claims 2-10 and 12-16.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over PubChem CID 119071689 (create date: 03 June 2016; listed on IDS filed 03 July 2025) in view of Shah et al. (AAPS PharmSciTech, Vol. 15, No. 5, 1307-1323, October 2014) and Li et al. (Drug Discov Today. 2010 December ; 15(23-24): 1052–1057).
PubChem CID 119071689 teaches a compound embraced by Formula I.
PubChem CID 119071689, although teaching a compound embraced by Formula I, fails to teach that compound in a composition comprising a pharmaceutically acceptable carrier.
Li et al. teaches that PubChem provides, among other aspects, resources to help facilitate the development of new drugs.
Shah et al. provide guidance regarding the development of preclinical formulations suitable for creating a pharmaceutical composition.
It would have been prima facie obvious to create a composition comprising the compound disclosed in PubChem CID 119071689 and a pharmaceutical acceptable carrier.
As Li et al. explain, PubChem provides, among other aspects, resources to help facilitate the development of new drugs. The is, PubChem exists in large part to motivate researchers to test the activity of compounds disclosed on PubChem, such as the compound associated with the PubChem CID 119071689 record. Shah et al. provide guidance regarding developing preclinical formulations suitable for creating a pharmaceutical composition comprising compounds such as those disclosed in PubChem CID 119071689. And following that guidance, one of ordinarily skill in the art would have had a reasonable expectation of success. As such, the claimed pharmaceutical composition would have been obvious.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over CAS RN 1427971-52-5 (entered date: 11 Apr 2013; listed on IDS filed 03 July 2025) in view of Shah et al. (AAPS PharmSciTech, Vol. 15, No. 5, 1307-1323, October 2014)
CAS RN 1427971-52-5, which is listed on the CHEMCATS file accessible through STN, teaches a compound embraced by Formula I. The compound corresponding to CAS RN 1427971-52-5 entered the CAS Chemical Library with Enamine listed as the supplier.
CAS RN 1427971-52-5, although teaching a compound embraced by Formula I, fails to teach that compound in a composition comprising a pharmaceutically acceptable carrier.
Shah et al. provide guidance regarding the development of preclinical formulations suitable for creating a pharmaceutical composition.
It would have been prima facie obvious to create a composition comprising the compound disclosed in CAS RN 1427971-52-5 and a pharmaceutical acceptable carrier.
The CAS Chemical Library provides, among other aspects, resources to help facilitate the development of new drugs, including suppliers of compounds tested. The is, the CAS Chemical Library exists in large part to motivate researchers to test the activity of compounds disclosed on the CAS Chemical Library, such as the compound associated with the CAS RN 1427971-52-5 record. Shah et al. provide guidance regarding developing preclinical formulations suitable for creating a pharmaceutical composition comprising compounds such as those disclosed in CAS RN 1427971-52-5 record. And following that guidance, one of ordinarily skill in the art would have had a reasonable expectation of success. As such, the claimed pharmaceutical composition would have been obvious.
Conclusion
No claim is currently allowable.
Claim 18 is withdrawn from consideration because the entirety of the claim has not been searched and the expanded species do not read on claim 18.
Claims 25-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY S MAYHEW whose telephone number is
571-272-8428. The examiner can normally be reached Mon-Fri, 11:00 AM-7:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON A BROOKS can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BSM/Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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