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 .
Status of the Claims
Claims 1-18, 21-23 and 25 are pending. Claims 2-6, 8-13, 15-18, 21-23 and 25 are withdrawn. Claims 1 and 14 are rejected. Claim 7 is objected to.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 12/15/2023 was considered by the Examiner.
Election/Restrictions
Applicant’s election without traverse of Group I and the species:
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in the reply filed on 5/11/2026 is acknowledged.
Claims 1, 7, and 14 embrace Applicant’s elected species and are therefore under examination. The elected species is free of the prior art. As per MPEP 803.02, “Following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability.” A non-elected species has been found obvious, incidental to the search of the elected species, and is presented below in the interest of compact prosecution.
Claims 2-6, 8-13, 15-18, 21-23 and 25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 1 is objected to because of the following informalities: Line 1 should read: “A compound selected from the group consisting of:”. . Appropriate correction is required.
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(s) 1 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thede et al. (WO2021116178).
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Thede et al. discloses the following Example 418 on p. 904:
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; the prior art compound may be used to treat cancer disorders (see abstract). Thede also discloses that compounds of the invention can be mixed with pharmaceutically acceptable carriers (see p. 236, lines 9-15).
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art compound is a positional isomer of the last compound of instant claim 1 (fluorine shifted on benzene).
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Regarding instant claims 1 and 14, see MPEP 2144.09(II): “ ‘Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) 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).” A skilled artisan would have had a reasonable success at arriving at a compound of instant claim 1 from a positional isomer of the prior art. A positional isomer renders the instant claims obvious because a PHOSITA would have expected the isomer to have similar properties to those of the instant compound (particularly the last compound of instant claim 1).
Allowable Subject Matter
Claim 7 is 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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 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.
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/MEGHAN C HEASLEY/Examiner, Art Unit 1626
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