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 and
Status of the Claims
Applicant’s election without traverse of Group II, drawn to compounds (claims 2, 7-10 and 12), in the reply filed on June 23, 2026, is acknowledged with appreciation.
Claims 1, 3-6, 11, 13, and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant additionally elected the species of Compound 50:
PNG
media_image1.png
187
326
media_image1.png
Greyscale
, which is readable on claims 2, 7-10 and 12.
Applicants’ elected species of the compound of formula (II) was found to be free of the prior art. However, no claim reads solely on the elected species. In accord with MPEP 803.02 the search was extended to the extent necessary to determine patentability of the Markush-type claim. As discussed in the 103 rejection below, art was found that reads on the Markush-type claim. In accord with MPEP 803.02, the search is not extended unnecessarily to all species. The scope of the independent invention that encompasses the elected species is as follows:
a compound according to formula (II) wherein J1-J4 are CH; R is H; R1 is -OR12 wherein R12 is H or alkyl; R2 to R5 are selected from H, alkyl and halogen; R6 is hydrogen; and the remaining variables are as defined in claim 2.
The non-elected compound species are presently withdrawn from consideration.
Claims 2, 7-10 and 12 are under examination with the elected species and are the subject of this office action.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on December 6, 2023 and April 24, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner, please refer to the signed copies of Applicant’s PTO-1440 forms, attached herewith.
Specification
The abstract of the disclosure is objected to because the first line of the abstract contains the term “new.” It is suggested that the term “new” be deleted from the language of the abstract. Once the determination of the novelty of a claimed invention has been established and the disclosure of the invention made public and/or patented, the claimed invention is no longer new/novel, since the scope of the invention no longer embraces what is considered “novel”. Thus, the incorporation of “new” into the language of the abstract is not appropriate. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The title of the invention is objected to because it contains the term “novel.” It is suggested that the term “novel” be deleted from the title. Once the determination of the novelty of a claimed invention has been established and the disclosure of the invention made public and/or patented, the claimed invention is no longer new/novel, since the scope of the invention no longer embraces what is considered “novel”. Thus, the incorporation of “new” into the title is not appropriate.
The disclosure is objected to because of the following informalities:
The Specification contains the term “new,” (i.e., “new cinnamic acid amides,” see paragraph [001]). It is suggested that the term “new” be deleted from the language of the Specification. Once the determination of the novelty of a claimed invention has been established and the disclosure of the invention made public and/or patented, the claimed invention is no longer new/novel, since the scope of the invention no longer embraces what is considered “new”. Thus, the incorporation of “new” into the language of the Specification is not appropriate. Appropriate correction is required. See MPEP § 608.01(b).
Claim Objections
Claim 2 is objected to for the following minor informalities:
at page 6, line 7, there is an extra “and” in between “R5” and “R7,” where there should be a comma;
at page 6, line 15 recites: “R8, R9 and are H, …[language omitted]” wherein it appears either an R moiety is missing after the term “and” or the term “and” should be in between R8 and R9;
at page 7, line 1, a comma is missing after “H”, and a semicolon is missing after “-OR12”;
at page 7, line 4, a comma is missing after “
PNG
media_image2.png
71
68
media_image2.png
Greyscale
”;
at page 7, line 6 reads “R12 are” but should be singular, i.e., “R12 is”;
at page 7, line 8, a hyphen “-“ is missing in the first moiety, i.e., the first moiety should be “-“(CH2)u(C3-C10)aryl;
at page 7, line 8, a semicolon appears to be missing after the moiety “-(CH2)u(C3-C10)heteroaryl”;
at page 7, line 20, the term “and” is missing between “CH” and “N”;
at page 8, line 5, a comma is missing after the term “C”’;
at page 9, line 4, an element is missing between the term “then” and “is not H;”;
at page 12, in the last line, the term “and” is missing between “CH” and “N”.
Claim 7 is objected to for the following minor informalities:
at page 12, line 2, after “R7” and before “R11,” the term “or “ should be replaced with the term “and”.
Claim 9 is objected to because of the following informalities:
in each of the definitions of the “R” variables, the term “and” is missing between the second-to-last element and the last element listed in the group, i.e., in lines 2-3, the term “and” should be placed between “-O-(C3-C10)aryl,” and “-O(CH2)u(C3-C10)aryl,”; and
in line 10 of claim 9, the definition of “R3” is bulleted with a “c)” notation, however it appears that each of the “R” variables are notated with lower case numerals, i.e., i), ii), iii), etc., such that “R3” should be notated with “iii)”, “R4” should be notated with “iv)” etc.
Claim Rejections - 35 USC § 112(b)
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 2, 7-10, and 12 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.
17. Claim 2 is indefinite in the following aspects:
a. claim 2 is unclear regarding the multiple recitations of “preferably” and “most preferably”, i.e., at page 6, line 13; page 7, lines 4, 17, and 18; and page 8, line 1, which render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05; and
b. at page 7, line 10, it is not clear what is meant by the limitation “…wherein two adjacent rests of R8 to R10 optionally… [language omitted]” [emphasis added]; and
c. at page 7, lines 10-11, it is not clear what underlying ring is intended in the recitation of “…underlying aromatic ring of formula (II)”; and
d. at page 7, lines 12-13, the partial compound structures depicted are not aligned with the roman numeral labels (III)-(XI) in the line(s) below, such that it is not clear which partial structure is labeled by which label; and
e. at page 8, lines 2-3, the conditional recitation of “the corresponding R1 to R4 attached to the respective J1 to J4 which is (are) N is absent” is confusing, and the following language is recommended:
“the corresponding R1 to R4 attached to the respective J1 to J4 is absent;”; and
f. at pages 8-9, each of the provisos (I)-(XV) recites “if… R1, R2, R3, R4… [language omitted] are H,” [emphasis added], however said provisos are confusing because as previously defined in lines 4-5 of the claim, R1 cannot be H. Clarification is requested.
18. Claim 3 is indefinite regarding the multiple recitations of “preferably” and “most preferably”, i.e., at page 10, lines 3, 5, and 6; which render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05.
19. Claim 8 is indefinite in the following aspects:
a. regarding the multiple recitations of “preferably” and “most preferably”, i.e., at page 12, lines 6, 10, 12; at page 13, lines 5-6; which render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05; and
b. at page 12, lines 11-12, it is not clear what underlying ring is intended in the recitation of “…underlying aromatic ring of formula (II)”.
20. Claim 9 is indefinite in the following aspects:
regarding the multiple recitations of “preferably” and “most preferably”, i.e., at page 14, lines 3, 4, 6, 8, 9, 10, 11, 12, 13, 14, 15, 16; and at page 15, line 12; which render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05; and
b. at page 15, lines 2-3, it is not clear what is meant by the limitation “…wherein two adjacent rests of R9 to R10 form a ring… [language omitted]” [emphasis added]; and
c. at page 15, lines 2-3, it is not clear what underlying ring is intended in the recitation of “…underlying aromatic ring of formula (II)”.
21. Claim 10 is indefinite regarding the recitation of “Preferably” at page 24, second to last line; which renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05.
22. Claims 7-9 and 12 are also rejected as being dependent upon and including all of the limitations of claim 2.
Claim Rejections - 35 USC § 112(a)
23. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
24. Claims 2, 7-10 and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
25. In particular, Applicant has not demonstrated support for the full scope of compounds according to formula (II):
PNG
media_image3.png
205
265
media_image3.png
Greyscale
recited in claim 2, and their pharmaceutical compositions thereof.
26. The MPEP §2163 states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by him. In the case of chemical entities, Applicant's attention is further directed to Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089, 118 S. Ct. 1548 (1998), which notes that an adequate written description requires a precise definition, such as by structure, formula, chemical name, or physical properties, “not a mere wish or plan for obtaining the claimed chemical invention.” While the court recognizes that, “[i]n claims involving chemical materials, generic formulae usually indicate with specificity what the generic claims encompass” (Id.), it is also recognized that for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim and/or the genus must be sufficiently detailed to show that applicant was in possession of the claimed invention as a whole (see Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir. 1991)). If a genus has substantial variance, the disclosure must present a sufficient number of representative species that encompass the genus in order to adequately describe the genus (i.e., the disclosure must describe a sufficient variety of species to reflect the variation within that genus). See MPEP § 2163. Otherwise, as stated by the court in Ariad Pharmaceuticals, Inc., v. Eli Lilly and Company (Fed. Cir. 2010), “a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus.
27. The factors considered in the Written Description requirement are:
(1) level of skill and knowledge in the art,
(2) partial structure,
(3) physical and/or chemical properties,
(4) functional characteristics alone or coupled with a known or disclosed
correlation between structure and function, and
(5) the method of making the claimed invention.
28. Level of skill and knowledge in the art: The level of skill to practice the art of the instantly claimed invention is high and requires a variety of skills usually found in institutions and companies that employ highly trained and skilled scientists to carry out these tasks.
29. Partial structure; Physical and/or chemical properties; and Functional characteristics: In the instant case, claim 2 is drawn to the genus of compounds of formula (II):
PNG
media_image3.png
205
265
media_image3.png
Greyscale
, wherein J1, J2, J3 and J4 can be CH or N such that the ring containing J1-J4 can be any nitrogen containing 6-membered heteroaryl having from 1-4 nitrogen atoms; and R1 comprises any 5 to 10 membered heteroaryl ring or any 3 to 10 membered aryl or cycloalkyl ring; and R2 to R5, R7, and R11 comprise H, alkyl, halogen, azido, cyano, aryl, cyclocalkyl, etc such that the genus of formula (II) is extremely broad with substantial variance, embracing hundreds of thousands of potential compounds, if not millions of compounds, bearing little structural resemblance to one another. Yet, the instant Specification discloses only approximately a few dozen compound species within the recited formula (II), in the synthesis examples and Tables 2 and 3 (pages 54-93), wherein it is noted that all of the examples provided comprise phenyl for the ring comprising “J1-J4” (i.e., each of J1, J2, J3, and J4 is CH), and the only heteroaryl rings are present in the R1 moiety, i.e., methoxy-pyrazolyl or methoxy-pyridinyl.
30. The instant specification teaches that the instantly recited cinnamic acid compounds are antifibrotic drugs, which as a class are useful for treating certain fibrotic diseases such as fibrosis and neoplasia. The specification provides in vitro inhibitory activity (demonstrating graded inhibition of fibrotic activity in lung fibroblasts) of a few dozen tested compounds in Tables 5.1 and 5.2 at pages 102-103.
31. The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172; Capon v. Eshhar, 418 F.3d 1349, 1357-58, 76 USPQ2d 1078, 1083-84 (Fed. Cir. 2005). The fields of biology and chemistry are considered “unpredictable” because the complexity and unpredictability of chemical and biological interactions can make it difficult to understand the exact properties of an invention. The pharmaceutical industry is the prototypical example of a highly unpredictable field. Pfizer v. Teva Pharm., 482 F.Supp.2d 390, 413 (D.N.J. 2007); 2 Chisum on Patents § 5.04.
32. While the MPEP does not define what constitutes a sufficient number of representative species, the courts have indicated what does not constitute a representative number of species to adequately describe a broad generic. For example, in In re Gostelli, the courts determined that the disclosure of two chemical compounds within a subgenus did not describe that subgenus. In re Gostelli, 872 F.2d 1008 (Fed. Cir. 1989). In the instant case, it is similarly determined that the disclosure of a few dozen compound species does not adequately describe a genus embracing hundreds of thousands, if not millions, of additional compound species bearing little structural relationship with those disclosed compounds in Tables 2 and 3 (see paragraph “27” above). That is, the Specification does not disclose a sufficient variety of species to reflect the extreme variance in the recited genus.
33. Thus, Applicants have failed to provide guidance or data or evidence as to how the skilled artisan would be able to extrapolate from the disclosure to use the claimed invention. “A description of what a material does, rather than of what it is, usually does not suffice." Rochester, 358 F 3d at 923; Eli Lilly, 119 at 1568. Instead, the “disclosure must allow one skilled in the art to visualize or recognize the identity of the subject matter purportedly described.” Vas-Cath Inc. v. Mahurkar, 19 USPQ2d 1111, makes clear the "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed." (See page 1117.) The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed." (See Vas-Cath at page 1116).
34. The description requirement of the patent statue requires a description of an invention, not an indication of a result that one might achieve if one made that invention. See In re Wilder, 736, F.2d 1516, 1521,222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming rejection because the specification does "little more than outlin[e] goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate.").
35. Accordingly, it is deemed that the specification fails to provide adequate written description for the claimed invention and does not reasonably convey to one skilled in the relevant art that the inventors had possession of the entire scope of the claimed invention.
Claim Rejections - 35 USC § 103
36. 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.
37. 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.
38. 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.
39. Claims 2, 7-9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar et al., Med Chem Research 2016, (cited on Applicant’s IDS of December 6, 2023).
Claims 2 and 7-9 are drawn to a compound according to formula (II),
PNG
media_image3.png
205
265
media_image3.png
Greyscale
wherein the scope of the independent invention is defined as follows (see paragraph “4” above):
a compound according to formula (II) wherein J1-J4 are CH; R is H; R1 is -OR12 wherein R12 is H or alkyl; R2 to R5 are selected from H, alkyl and halogen; R6 is hydrogen; and the remaining variables are as defined in claim 2.
40. Kumar et al. teach a functionally related genus of cinnamic acid derivatives having the same core structure that is instantly recited by Applicant, in particular compound VIIe, in Scheme I:
PNG
media_image4.png
192
233
media_image4.png
Greyscale
(page 1184), wherein “R5” is methoxy in the ortho- position, which meet the limitation(s) of claim 2 wherein the substituent corresponding to Applicant’s R1 is methoxy, and on the other phenyl ring, the para- substituent is hydroxy, and the meta- substituent is methoxy.
41. Kumar et al. teach that said compound has antioxidant and cytotoxic activity (abstract), and suggest a pharmaceutical supplement comprising said compound, which meets the limitation of claim 12 (page 1190, right column, second to last paragraph).
42. The compound disclosed by Kumar et al. differs differing solely in the position of the methoxy substituent corresponding to “R9” on the phenyl ring.
43. Yet, compounds that are position isomers (compounds having the same radicals
in physically different positions on the same nucleus) are generally of sufficiently
close structural similarity that there is a presumed expectation that such compounds
possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See
also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima
facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d
1197 (Fed. Cir. 2007) (5(S) stereoisomer of ramipril obvious over prior art mixture of
stereoisomers of ramipril.).
Therefore, as guided by Kumar et al., one of skill in the art would have been motivated before the effective filing date of the claimed invention to prepare compound VIIe employing a methoxy substitution in the para- position (i.e., R9) of the phenyl ring, with a reasonable expectation of success.
44. Claims 2 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Cooley et al., WO 2017117430 A1 (cited on Applicant’s IDS of December 6, 2023).
Claims 2 and 7-9 are drawn to a compound according to formula (II),
PNG
media_image3.png
205
265
media_image3.png
Greyscale
wherein the scope of the independent invention is defined as follows (see paragraph “4” above):
a compound according to formula (II) wherein J1-J4 are CH; R is H; R1 is -OR12 wherein R12 is H or alkyl; R2 to R5 are selected from H, alkyl and halogen; R6 is hydrogen; and the remaining variables are as defined in claim 2.
45. Cooley et al. teach a functionally related genus of cinnamic acid derivatives having the same core structure that is instantly recited by Applicant, in particular compound 147, taught as a “top molecule,” and go on to disclose analogs 147a-m of said compound (page 26, top, and page 27, second paragraph), specifically disclosing compound 147j:
PNG
media_image5.png
84
147
media_image5.png
Greyscale
in Figure 7 (page 120), which is the same as a compound of Applicant’s instant formula (II) wherein R1 is -OR12 and R12 is H; R is H; R2, R3, R5 and R6 are each H; R4 is methyl; and R7-R11 are H. Regarding Applicant’s proviso that “if R9 = H; either R8 or R10 is -OR12,” Cooley et al. generically indicate that “R” can be Br, wherein the “R” substitution on the phenyl ring can be in the position corresponding to Applicant’s instant R9 (i.e., the para- position) in compound 147k, which obviates the need for the proviso.
46. Cooley et al. teach that said compounds are useful in treating fibrotic diseases (page 3, under Summary).
Therefore, one of skill in the art would have been motivated before the effective filing date of the claimed invention to prepare compound 147j employing a Br substitution in the para- position (i.e., R9) of the phenyl ring, as guided by Cooley et al., with a reasonable expectation of success.
Conclusion
47. Claims 1-14 are present in the application. Claims 1, 3-6, 11 and 13 are presently withdrawn as directed to a non-elected invention. Claims 2, 7-10 and 12 are rejected.
Claims 2 and 7-10 are also objected to. No claim is presently allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANET L COPPINS whose telephone number is (571)272-0680. The examiner can normally be reached Monday-Friday 8:30AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy L Clark can be reached at 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JANET L COPPINS/Examiner, Art Unit 1628
/AMY L CLARK/Supervisory Patent Examiner, Art Unit 1628
