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 .
Claim Status
Claims 1-20 are pending. Claims 1-20 are rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 8, 11 and 16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The compounds of claim 8 are broader in scope than disclosed in independent claim 1. Compound 4-6 and 14 of claim 8 contain ring A where the heteroaryl is a multi-ring in which two of the rings are not connected by a carbon-carbon bond as required:
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,
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,
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,
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.
Claim 16 is rejected as it fails to obviate the issue of claim 8 from which it depends.
Similarly, claim 3 contains moieties for ring A where the rings are not fused by a carbon-carbon bond:
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,
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,
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.
Claim 11 is rejected as it fails to obviate the issue of claim 8 from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(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.
Claim(s) 1-7 and 9-15 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US 2005/0245530 A1 by Borzilleri et al.
The prior art discloses the compound below which reads on instant claims 1-7 and 9-15 (paragraph [0802]):
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The compound above and is embraced by instant Formula 1 where X is O, A is
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, B is
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, Y is a nitrogen heteroatom, and each of R1, R2, R4 and R5 are hydrogen.
Regarding the pharmaceutical composition of claims 9-15, the prior art teaches various oral forms comprising an excipient and the compound above as an active ingredient (paragraph [0138]).
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.
Claim(s) 1-7, 9-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0245530 A1 by Borzilleri et al.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
The prior art teaches (title) “[m]onocyclic heterocycles as kinase inhibitors” and discloses the compound below (paragraph [0802]):
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.
The compound above reads on instant claims 1-7 and is embraced by instant Formula 1 where X is O, A is
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, B is
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182
316
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, Y is a nitrogen heteroatom, and each of R1, R2, R4 and R5 are hydrogen.
Regarding the pharmaceutical composition of claims 9-15, the prior art teaches various oral forms comprising an excipient and the compound above as an active ingredient (paragraph [0138]).
Regarding instant claims 17-19, the prior art teaches a method of treating a proliferative disease such as cancer via modulation of Met kinase comprising administering the compound above to a subject (paragraph [0105]).
Regarding instant claim 20, the prior art discloses that the compound above is useful for treating lung cancer, breast cancer, etc. (paragraph [0124]).
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art discloses a pharmaceutically acceptable salt of instant Formula 1 for treating cancer but does not disclose that the compound was administered to a subject.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
A person of ordinary skill seeking to treat a subject having a protein kinase-mediated disease such as cancer would have been motivated to administer the prior art compound as taught by Borzilleri et al. to improve therapeutic outcomes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLI A CHICKS whose telephone number is (571)270-0582. The examiner can normally be reached M-Th 7 a.m.- 5 p.m..
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/A.A.C./Examiner, Art Unit 1626
/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626