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 § 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.
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 17, 25, 35 and 57 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 17, the phrase "R1" renders the claim indefinite because it is unclear whether the limitation of R1 in the compound is of the same limitation of R1 in claim1, as the claim is dependent from claim 1.
Regarding claim 25, the structures of
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renders the claim indefinite because the fused cyclopropyl attachment does not coincide with the limitations of claim 1 of compound
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which does not have a cyclopropyl attachment.
Regarding claim 35, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 57, the phrase "wherein the method is carried out in a subject" renders the claim indefinite because it is unclear what applicant considered “in a subject”. Is it carried out in an organ by intravenous administration or in the digestive tract by oral administration. For prior art purposes examiner is interpreting the phrase as “in vivo” method.
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.
Claims 1-2, 5, 7, 9, 11, 21, 25-26, 28, 41-45, 47-48, 50-52 and 55-57 are rejected under 35 U.S.C. 103 as being unpatentable over Woods et al. (US Patent No. 9718821).
Regarding claims 1-2, 5, 7, 9, 11, 21, 25-26, 28, 41-45, 47-48, 50-52 and 55-57, Woods teaches a method for inhibiting the activity of Wee-1 kinase and the treatment of cancers of the breast, colorectal, colon, lung, ovaries, pancreas, prostate, leukemia and brain by administration of a composition comprising
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or a pharmaceutical acceptable salt in combination with one or more additional agents from a list which includes a chemotherapeutic agent and a pharmaceutically acceptable excipient (relevant to claims 47-48, 50-52 and 55) (abstract, Pg. 57, 59-60). The administration as taught by Woods can be carried out in vitro (relevant to claim 56) (Pg. 46) or administered orally, intraarticular injection, parenterally, transdermally, vaginally and intraarterially as well as placement in the body (relevant to claim 57) (Pg. 57).
Of the above compound Woods teaches
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wherein
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(relevant to claim 2, 5, 7, 9) (Pg. 9) and B is selected from a list of structures which includes
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,
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,
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, wherein
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(relevant to claims 11 and 21) (Pg. 9) and
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(Pg. 10).
In terms of claims 41-45, the claims further limits compound VII of claim 26 but does not state the “wherein the compound is of Formula VII, thus the teachings of Woods read to the limitations.
Woods does not convey the exact compounds of claims 25-26 and 28, however it would have been obvious to someone of ordinary skill in the art at the time of filing to have developed compounds
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and Formula IVa wherein R4 is H from the teachings of woods. One would have been motivated to do so from the above compound of
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with the limitations of R3 and structure B. There is a reasonable expectation of constructing compounds
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and Formula IVa from the teachings of Woods.
Allowable Subject Matter
Claims 14, 17-19, 30 and 32 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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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