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 .
DETAILED ACTION
This Office Action is in response to Applicant’s Arguments and Amendment filed, 08/07/2026, wherein the Amendment amended claims 1, 6-8, 10, 12-13, and 18-21.
Claims 1-10 and 12-21 are pending and examined on the merits herein.
Priority
This application claims the following priority:
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REJECTIONS WITHDRAWN
The status for each rejection and/or objection in the previous Office Action is set out below.
Claim Objections
Applicant’s amendments to claims 13 and 18-21 are sufficient to overcome these objections.
Double Patenting over US Patent No. 12,133,841
On pg. 13, Remarks, Applicant persuasively argues that the ‘841 patent does not share a common assignee or inventor(s).
REJECTIONS MAINTAINED
Claim Objections
(New) Claims 1 and 12 are objected to because of the following informalities:
-In claim 1, the hollow rectangles around Roman Numeral “I,”
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, should be deleted.
-In claim 12, the hollow rectangles around “I-1” and “I-2” should be deleted.
Appropriate correction is required.
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 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.
Claims 1-10 and 12-21 are rejected under 35 U.S.C. 103 as being unpatentable over CN 112457326 (published 03/09/2021--Original, IDS of 06/13/2024; Translation, PTO-892).
‘326 teaches compounds of:
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, wherein M1 is preferably CH, CF, or N and M2 is preferably O or S (claims 1& 6, Translation & Original), and wherein a subspecies is exemplified with a thiazole ring (pg. 24, Original).
‘326 claims R1 as
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(claim 6, Translation; pg. 5, Original).
‘326 teaches R2 as:
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(pg. 19, [0030], Original; pg. 3, last full paragraph, Description).
‘326 specifically exemplifies:
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(pg.14, Original).
Regarding claims 1, 10, and 12, while ‘326 teaches
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, it differs from that of instant formula (I) in that it does not teach the thiazole ring,
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.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention to substitute the thiophene ring of ‘326 with a thiazole ring, to arrive at instant formula (I). One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success because:
-‘326 teaches M1,
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, as preferably CH, CF, or N, and M2 as preferably O or S,
-‘326 teaches
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as a subgenus of its compounds (pg. 24, Original).
As such, an ordinary skilled artisan would have been motivated to make such a modification/substitution since ‘326 teaches thiazole rings as within the scope of its compounds, and exemplifies such a subspecies. An ordinary skilled artisan would predictably expect such structurally similar compounds to have a similar therapeutic profile, i.e., ERK2 kinase inhibition, and thus be effective to treat solid tumors (Translation, last 2 pages of Description).
Regarding claims 2 and 3, R1 and R2 are H.
Regarding claim 4, R4 is CH3 substituted with three “F”’s.
Regarding claims 6 and 7, Rd is CH3.
Regarding claims 8-9, ring A is
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.
Regarding claims 5, 13, and 20, while modified ‘326 teaches
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, it differs from that of instant claims 5, 13, and 20 in that it does not teach a methyl group at the CF3 group position.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute “CF3” with “CH3,” to arrive at instant claims 5, 13, and 20. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success because:
-‘326 teaches its R2 position,,
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, as a heteroaryl group that is preferably substituted by methyl (Translation, claim 2),
-‘326 exemplifies species wherein the R2 aromatic ring is substituted with “CH3” at the 2-position of the ring (Original, pgs. 10-15).
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at a structural similar compound with the same or similar therapeutic profile.
Regarding claim 18, while modified ‘326 teaches
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, it differs from that of instant claim 18, in that it does not teach
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It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute the -H on the pyrimidine ring with -CH3, to arrive at instant claim 18. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success because:
-‘326 teaches R5 position,
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,as H or a C1-6 alkyl and teaches R5 as preferably methyl (Translation-claims 1-3), and
-‘326 exemplifies compounds wherein R5 is methyl (Original, pgs. 10-15).
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at structural similar compound with the same or similar therapeutic profile.
Regarding claim 19, while ‘326 teaches
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, it differs from that of instant claim 19 in that it does not teach a tetrahydropyran ring at the instant ring A position.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute the pyrazolyl ring of
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, with a tetrahydropyran ring, to arrive at instant claim 19. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success because:
-‘326 teaches both tetrahydropyran rings and pyrazolyl rings at its R1 position,
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,
-‘326 exemplifies compounds with both tetrahydropyran rings and pyrazolyl rings (Original pgs. 10-15),
-‘326 demonstrates that its compounds having either tetrahydropyran rings or pyrazolyl rings at its R1 position have therapeutically effective IC50 values for inhibition of ERK2 kinase and proliferation of Colo-205 cells (Original, pgs. 62-63; Translation, last two pages).
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at a structural similar compound with the same or a similar therapeutic profile.
Regarding claim 21, while modified ‘326 teaches
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, it differs from that of instant claim 21, in that it does not teach
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.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute the -H on the pyrimidine ring with -CH2CH3, to arrive at instant claim 21. One of ordinary skill in the art would have been motivated to make such a modification, with a reasonable expectation of success because ‘326 teaches its R5,
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, as H or a C1-6 alkyl (Translation-claims 1-3).
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at a structural similar compound with the same or a similar therapeutic profile.
Regarding claims 14-17, ‘326 teaches the compounds in pharmaceutical compositions and teaches methods of treating tumors by administering to individuals, therapeutically effective amounts of the compounds or compositions thereof (claims 10-13, Translation).
Response to Arguments
On pgs. 7-8, Remarks, Applicant argues that a POSITA reading the ‘326 publication as a whole would not have selected
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as a starting point for further modification because it was neither synthesized nor tested, and because no compounds having this core structure were selected for characterization in Table 3 of the ‘326 publication, thus demonstrating that such compounds are inferior and that a POSITA seeking to improve the compounds of the ‘326 publication would have had no reason to select
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.
These arguments have been fully considered, but are not found persuasive.
It is first respectfully pointed out that patents are relevant as prior art for all they contain and that “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994),” see MPEP 2123.
Moreover, regarding “lead compounds,” the term "lead compound" in a particular opinion can have a contextual meaning that may vary from the way a pharmaceutical chemist might use the term. In the field of pharmaceutical chemistry, the term "lead compound" has been defined variously as "a chemical compound that has pharmacological or biological activity and whose chemical structure is used as a starting point for chemical modifications in order to improve potency, selectivity, or pharmacokinetic parameters;" "[a] compound that exhibits pharmacological properties which suggest its development;" and "a potential drug being tested for safety and efficacy." See, e.g., http://en.wikipedia.org/wiki/Lead_compound, accessed January 13, 2010; www.combichemistry.com/glossary_k.html, accessed January 13, 2010; and www.buildingbiotechnology.com/glossary4.php, accessed January 13, 2010. The Federal Circuit in Eisai makes it clear that from the perspective of the law of obviousness, any known compound might possibly serve as a lead compound: "Obviousness based on structural similarity thus can be proved by identification of some motivation that would have led one of ordinary skill in the art to select and then modify a known compound (i.e. a lead compound) in a particular way to achieve the claimed compound." Eisai, 533 F.3d at 1357, 87 USPQ2d at 1455. It should be noted that the lead compound cases do not stand for the proposition that identification of a single lead compound is necessary in every obviousness rejection of a chemical compound. For example, one might envision a suggestion in the prior art to formulate a compound having certain structurally defined moieties, or moieties with certain properties. If a person of ordinary skill would have known how to synthesize such a compound, and the structural and/or functional result could reasonably have been predicted, then a prima facie case of obviousness of the claimed chemical compound might exist even without identification of a particular lead compound. See MPEP 2143.
Additionally, it is pointed out that compounds containing a thiophene ring in combination with a pyridine ring are exemplified as having ERK2 inhibitory activity and Colo-205 cell proliferation inhibitor activity. See examples 6, 7, 15, 21, 23, and 26 of CN ‘326:
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([0216]-[0217], [0238], [0250], [0254], [0260]). It is further pointed out that Compound 23 has an IC50 of less than 200nm ([0386]). And ‘326 teaches
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, with a thiazole ring, as a preferred subgenus of its compounds (pg. 24, Original).
Lastly, it is respectfully pointed out that obviousness does not require “seeking to improve the compounds of the ‘326 Publication,” but a reasonable expectation of success; obviousness does not require absolute predictability (MPEP 2143.02).
As such, these arguments are not persuasive to overcome the instant rejection.
(Slightly modified in view of the arguments overcome the rejection over claims 18, 20-21) Claims 1-10, 12-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/110169 to Li (published 06/10/2021, IDS of 06/13/2024; citations to English equivalent US 2023/0072937, IDS of 07/05/2024) in view of CN 112457326 (published 03/09/2021--Original, IDS of 06/13/2024; Translation, PTO-892) and Cannon (Analog Design, Burger’s Medicine Chem and Drug Discovery, published 2003, PTO-892).
Li teaches compounds that exhibit excellent inhibitory activity against ERK2 kinase ([0083]; pg. 22, Table 2):
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(abstract; pg. 24, claim 1).
Li teaches the following subgenera:
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(pg. 25, claim 14).
Li exemplifies the following species:
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(pg. 26, claim 15).
Regarding claims 1-5, 8-10 and 12, while Li teaches the above species, the species differ from that of claims 1-5, 8-10 and 12, in that they do not teach a pyridine ring at the phenyl ring position.
CN ‘326 is applied as discussed above and incorporated herein. CN ‘326 teaches its compounds as EKR kinase inhibitors for the treatment of cancer, and specifically teaches its compounds as ERK2 kinase inhibitors (pg. 1 and last two pages, Description).
Cannon teaches bioisosteres as groups or molecules which have chemical and physical properties producing broadly similar biological properties (pg. 690).
Cannon teaches benzene and pyridine as bioisosteric ring equivalents (pg. 690, Table 16.1).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention to substitute the phenyl rings of Li with the pyridine rings, to arrive at instant claims 1-10 and 12. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-both Li and CN ‘326 are directed to structurally similar compounds that are both ERK2 kinase inhibitors, useful for the treatment of solid tumors,
-Cannon teaches phenyl and pyridine rings as bioisosteres that produce biologically similar properties,
-CN ‘326 teaches compounds with either a phenyl or pyridine ring as effective ERK2 kinase inhibitors (see pgs. 62-63, Original).
As such, an ordinary skilled artisan would have been motivated to make such a substitution to predictably arrive at a structurally and functionally equivalent ERK2 kinase inhibitor for the treatment of solid tumors.
Regarding claims 6-7, claims 6 and 7 limit ring A when it is optionally substituted. As such, claims 6-7 are interpreted as if ring A is substituted, then the limitations of 6-7 apply. Since ring A is not substituted, these limitations are met.
Regarding claims 13 and 19, while the combination of Li, CN ‘326, and Cannon teaches
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, it differs from that of instant claims 13 and 19 in that it teaches F and not a methyl group at the two position of the pyridine ring, and it does not teach a methyl group on the pyrimidine ring as instantly claimed:
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.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute the F for CH3 on the pyridine ring, and to substitute a H for a CH3 on the pyrimidine ring, of
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, to arrive at instant claims 13 and 19. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-Li teaches that its R4 position,
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, can be F, Cl, or CH3 (pg. 24, claims 6-7), and
-Li teaches that its R5 position can be CH3 (pg. 24, claim 8-9).
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at a structurally and functionally equivalent compound.
Regarding claims 14-17, the combination of Li, CN ‘326, and Cannon teaches a method of treating a solid tumor by administering to a subject one of its compounds, and teaches a medicament comprising its compounds (Li-pg. 27, claims 16-20).
Response to Arguments
Table A on pg. 11, Remarks, which provides data from Table 4 of the instant Application and Table 4 of Li ([0270])) demonstrates unexpected results, in comparison to the compounds of Li. The substitution of the phenyl ring substituted with a halogen at the 2-position, with a 2-pyridyl ring substituted with a methyl group in the 2-position, results in a) a 2-fold increase in Cmax compared to examples 5 and 6 of Li, b) a 1.7 and 1.5-fold increase in dose-normalized AUC (DNAUC) as compared to Examples 5 and 6, and c) a 1.8-fold increase in oral bioavailability of Example 6. In view of these unexpected results, the rejection of Li in view of CN ‘326 and Cannon applied claims 18 and 20-21, is overcome.
On pg. 10, Remarks, Applicant argues that “The Examiner relies on a compound arbitrarily selected from the ‘326 publication. . .to support that a POSITA would have combined the two publications due to structural similarities,” and “these two compounds differ in several structural features throughout their entire molecular scaffold.”
These arguments have been fully considered, but are not found persuasive. It is respectfully pointed out that the rejection does not rely on a single compound of the CN ‘326 publication, as argued. Moreover, the rejection is made over Li in combination with CN ‘326 and Cannon. Additionally, Li and CN ‘326 are structurally similar and are both ERK2 kinase inhibitors, and are both taught for the treatment of solid tumors. And Cannon teaches phenyl and pyridine rings as bioisosteres that produce biologically similar properties.
As such, it would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention to substitute the phenyl rings of Li with the pyridine rings of ‘CN 326, to arrive at instant claims 1-5, 8-10 and 12. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-both Li and CN ‘326 are directed to structurally similar compounds that are both ERK2 kinase inhibitors,
-Cannon teaches phenyl and pyridine rings as bioisosteres that produce biologically similar properties,
-CN ‘326 teaches compounds with either a phenyl or pyridine ring, such as
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, as effective ERK2 kinase inhibitors (see pgs. 62-63, Original).
As such, an ordinary skilled artisan would have been motivated to make such a substitution to predictably arrive at a functionally equivalent ERK2 kinase inhibitor for the treatment of solid tumors.
Thus, Applicant’s arguments are not persuasive to overcome the rejection.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
(Slightly modified in view of the arguments overcome the rejection over claims 18, 20-21) Claims 1-10, 12-17, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,522,616 (PTO-892) in view of CN 112457326 (published 03/09/2021--Original, IDS of 06/13/2024; Translation, PTO-892) and Cannon (Analog Design, Burger’s Medicine Chem and Drug Discovery, published 2003, PTO-892).
‘616 claims the following compound
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(claim 1), and the following subspecies:
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(claim 14), wherein m and n are 0-2, R2 and R3 are a C1-3 alkyl, R4 can be H, F, Cl, Br, I or a C1-3 alkyl, and R5 can be a C1-3 alkyl.
‘616 claims the following species:
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(claim 15).
‘616 claims a method of treating colon cancer or NSCLC in a subject by administering these compounds (claims 16-17).
‘616 claims a medicament comprising these compounds (claim 18).
While ‘616 claims the above compounds, they differ from that of the instant claims, in that they do not teach a pyridine ring at the phenyl ring position.
CN ‘326 is applied as discussed above and incorporated herein.
Cannon is applied as discussed above and incorporated herein.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention to substitute the phenyl ring, in the compounds of ‘616, with the pyridine rings of ‘CN 326, to arrive at the instant claims. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-both ‘616 and CN ‘326 are directed to structurally similar compounds that are both ERK2 kinase inhibitors (see Example 1 of ‘616, beginning in line 53 of Col. 41),
-Cannon teaches phenyl and pyridine rings as bioisosteres that produce biologically similar properties,
-CN ‘326 teaches compounds with either a phenyl or pyridine as effective as ERK2 kinase inhibitors (see pgs. 62-63, Original).
As such, an ordinary skilled artisan would have been motivated to make such a substitution to predictably arrive at a functionally equivalent ERK2 kinase inhibitor for the treatment of cancer.
Regarding claims 6-7, these claims limit ring A when it is optionally substituted. As such, claims 6-7 are interpreted as if ring A is substituted, then the limitations of 6-7 apply. Since ring A is not substituted, these limitations are met.
Regarding claims 13 and 19, while the combination of ‘616, CN ‘326, and Cannon teaches
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, it differs from that of instant claims 13 and 19 in that it teaches F or Cl and not a methyl group at the two position of the pyridine ring, and it does not teach a methyl group on the pyrimidine ring as instantly claimed:
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.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute the F or Cl for CH3 on the pyridine ring, and to substitute a H for a CH3 on the pyrimidine ring, of
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, to arrive at instant claims 13 and 19. One of ordinary skill in the art would have been motivated to make such a substitution, with a reasonable expectation of success, because:
-‘161 claims that its R4 position can be F, Cl, or CH3 (claim 7), and
-‘161 claims that its R5 can be CH3 (claim 9).
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at a structurally and functionally equivalent compound.
Regarding claims 14-17, ‘161 claims a method of treating a solid tumor, i.e., colon or NSCLC, by administering to a subject one of its compounds, and claims a medicament comprising its compounds (claims 16-20).
Response to Arguments
On pg. 13, Remarks, Applicant argues that this patent is the US patent issued from Li. As such, these arguments are addressed above.
For the reasons stated above, in reference to the unexpected results and Li, the rejection over claims 18 and 20-21, is withdrawn.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN WELLS whose telephone number is (571)272-7316. The examiner can normally be reached M-F 7:00-4:30.
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/LAUREN WELLS/Primary Examiner, Art Unit 1622