DETAILED ACTION
This office action is in response to applicant’s filing dated May 14, 2026.
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 .
Status of claims
Claims 1 - 14 are pending in the instant application.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1 – 8) in the reply filed on May 14, 2026 is acknowledged. The traversal is on the ground(s) that claimed compounds exhibit a significantly improved antibacterial activity over structurally similar agent taught by prior art. Applicant further argues that the inventions of Groups I and II constitute a product and a process of use of said product. Thus, the inventions of Groups I and II belong to a single general inventive concept under PCT 13.1, and it would be no undue burden on the Examiner to consider all the claims at the same time.
This is not found persuasive because, according to Rule 13.1, multiple inventions may be claimed in one international application as long as the multiple inventions share an inventive concept. For requirement of unity of Rule 13.1 to be fulfilled, multiple inventions must share the same or corresponding special technical feature. In other words, the shared (or corresponding) technical feature is considered to be novel and nonobvious over the prior art. If the shared technical feature is anticipated by or obvious over the prior art, then the claimed inventions are said to lack unity, and a restriction requirement is proper (see MPEP 1850 and 1893.03(d)). In the present application, as set forth in the previous office action, Groups I and Il lack unity of invention because even though the inventions of these groups require the technical feature of a compound having the core structure of formula I, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Basarab et al (WO 2006/087543 A1). Since the technical feature, i.e. a compound having the core structure of formula I is taught by the prior art, the technical feature lacks novelty. As such the technical feature linking inventions of Groups I and II does not constitute a special technical feature as defined by PCT RULE 13.2 as it does not define a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9 – 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 timely traversed the restriction (election) requirement in the reply filed on May 14, 2026.
Applicant’s election without traverse of compound No. 1 (3,4-dichloro-N-{(3S,4R)-1-[6-(2-hydroxypropan-2-y]) pyridazin-3-yl]-3-methoxypiperidin-4-yl} -5-methyl-1H-pyrrole-2-carboxamide) of structure:
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, as a single species of compound of formula I in the reply filed on May 14, 2026 is acknowledged.
Claims 1 – 8 are under consideration in the present office action as related to elected invention and species, compound No. 1 (3,4-dichloro-N-{(3S,4R)-1-[6-(2-hydroxypropan-2-y]) pyridazin-3-yl]-3-methoxypiperidin-4-yl} -5-methyl-1H-pyrrole-2-carboxamide).
Priority
The present application is a 371 of PCT/CN2022/098033, filed June 10, 2022, and claims the benefits of priority to Chinese application CN202110656714.8, filed June 11, 2021.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/01/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
Acknowledgement is made of the drawings received on December 11, 2023. These drawings are accepted.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(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 – 5, 7 and 8 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Breeze et al (WO 2005/026149 A1, hereinafter Breeze).
Instant claims are drawn to a compound of formula I:
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, where R1, R2, R3, R4, R5 and R6 are each independently hydrogen, halogen, C1-6 alkyl, such as compound of formula IAa:
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, where ring A is 5 to 8 membered heteroaryl, such as furyl, pyrrolyl, thiazolyl, isothiazolyl, thiadiazolyl, oxazolyl, isoxazolyl, oxadiazolyl, imidazolyl, pyrazolyl, pyridyl, pyrimidinyl, pyridazinyl or pyrazinyl. Instant claims are further drawn to a pharmaceutical composition, comprising compound of formula I and the pharmaceutically acceptable salt or stereoisomer thereof and one or more pharmaceutically acceptable carriers or excipients. Said pharmaceutical composition further comprises one or more other pharmacologically active ingredients.
Breeze teaches compounds of formula (1):
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, where W is NR5 and R5 is hydrogen; Y is hydrogen; R2, R3 and R4 is selected from hydrogen, halogen, C1-4 alkyl; R1 is 4 to 7 membered saturated, partially unsaturated or unsaturated heterocyclic ring containing 1, 2, 3, or 4 heteroatoms independently selected from 0, S and N, such as pyridinyl, pyrimidinyl, pyrazinyl, pyridazinyl, pyrazolyl, thiazolyl, thiadiazolyl, tetrazolyl, imidazolyl, furanyl, oxadiazolyl, isoxazolyl, oxazolyl and pyrrolyl. Heterocyclic ring R1 is substituted with hydroxy(1-4C)alkyl, such as hydroxymethyl. The exemplary compounds taught by Breeze are: 3,4-Dichloro-N-{1-[5-{hydroxymethyl)-1,3,4-thiadiazol-2-yl]piperidin-4-yl}-5-methyl-1H-pyrrole-2-carboxamide
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, where R1 is thiadiazolyl substituted with hydroxymethyl (page 208, ex. 256);
3,4-Dichloro-N-{1-[5-(hydroxymethyl)-1,3,4-oxadiazol-2-yl]piperidin-4-yl}-5-methyl-1H-pyrrole-2-carboxamide
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, where R1 is oxadiazolyl substituted with hydroxymethyl (page 222, ex 303). Breeze further teaches a pharmaceutical composition which comprises a compound of the formula (1) or a pharmaceutically-acceptable salt thereof, and a pharmaceutically-acceptable diluent or carrier (page 67, lines 13 – 15). In addition to the compounds of formula (1) the pharmaceutical composition may also contain or be co-administered with one or more known drugs selected from other clinically useful antibacterial agents (page 70, lines 16 – 19).
Thus, Breeze teaches compounds exhibiting antibacterial activity and having a structure identical to instantly claimed compounds encompassed by claims 1 – 5.
Thus, teachings of Breeze anticipate the compounds and composition of instant claims 1 – 5, 7 and 8.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Basarab et al (WO 2006/087543 A1, hereinafter Basarab).
Instant claim is drawn to a compounds of formula I:
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, such as compound of formula IAa:
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, e.g.:
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,
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,
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,
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or
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.
Basarab teaches compounds of formula (ID):
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(page 11, line 20), where R1, R2 and R3 are independently selected from hydrogen, halo, C1-4alkyl; R4 is C1-4alkoxy; R5 is C1-4alkyl (e.g. isopropyl (page 22, line 10)), substituted on carbon by one or more R12 and R12 is hydroxy, m is 1; R6 is hydrogen; ring A is heterocyclyl, where heterocyclyl is pyridinyl, pyrimidinyl, pyrazinyl, pyridazinyl, pyrazolyl, thiazolyl, thiadiazolyl, imidazolyl, furanyl, oxadiazolyl, isoxazolyl, oxazolyl and pyrrolyl (page 22, lines 25 – 32 and page 23, lines1 – 2).
Thus, the structure of compounds taught by Basarab correspond to instantly claimed when:
R1 is C1 alkyl (methyl); R2 and R3 are both halogens (Cl); R4 is C1 alkoxy (methoxy); R5 is isopropyl substituted with hydroxy, m is 1; R6 is hydrogen; and ring A is pyridinyl, pyrimidinyl, pyrazinyl, pyridazinyl, pyrazolyl, thiazolyl, thiadiazolyl, imidazolyl, furanyl, oxadiazolyl, isoxazolyl, oxazolyl or pyrrolyl.
Thus, since Basarab teaches compounds, where all structural elements are identical to those of instantly claimed compounds, and where compounds taught by prior art are useful for the same purpose (antibacterial agents), it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the present invention to make various known in the art structurally analogous compounds by selecting and combining known variables to arrive at claimed compounds. The one of ordinary skills would be motivated to do so in search of an active antibacterial agent with improved desired properties, with the reasonable expectation of success.
Therefore, taking all together, taught by prior art, the invention as a whole is prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
Claims 1 - 8 are rejected. No claim is allowed.
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/E.V.V./Examiner, Art Unit 1691
/SAVITHA M RAO/Primary Examiner, Art Unit 1691
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