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 Claims
Claims 1-15 are pending in the instant application. Claims 3-6 and 8-13 are amended via the amendment filed August 14th, 2024.
Priority
This is a 35 U.S.C. 371 National Stage filing of International Application No. PCT/US2022/037497 filed July 18th, 2022, which claims priority to 63/227,814, filed July 30th, 2021.
Information Disclosure Statement
The Information Disclosure Statements (IDS) filed 05/06/2024 and 08/05/2025 were considered by the Examiner.
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.
Claim(s) 1-4, 9 and 11-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arrhenius et al (WO 02/058690 A2).
Arrhenius teaches a method for treating a cardio vascular disease in a patient which comprises the administration of a therapeutically effective amount of composition consisting of the following compound, 3-{[(1-{4-[2,2,2-Trifluoro-1-hydroxy-1-(trifluoromethyl)ethyl]phenyl}-1H-imidazol-2-yl)thio]methyl}benzonitrile (claims 6 and 13):
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This compound is embraced by instant formula I, wherein R1, R3, R4 and R5 are hydrogen, R2 is cyano, n is 1, X is S, R11 and R12 are hydrogen, R6, R7, R9 and R10 are hydrogen and R8 is substituted alkyl.
Regarding claim 1, as seen above, the compound as taught by Arrhenius is embraced by instant formula I.
Regarding claim 2, X is S.
Regarding claim 3, n is 1.
Regarding claim 4, R11 and R12 are hydrogen.
Regarding claim 9, R2 is cyano.
Regarding claim 11, as seen above, Arrhenius teaches the compound above in a composition, wherein the composition includes an excipient (page 21, paragraph 3).
Regarding claim 12, the prior art is silent regarding “inhibiting human epithelial 15-(S)-lipoxygenase”. However: “inhibiting human epithelial 15-(S)-lipoxygenase” will inevitably flow from the teachings of the prior art (see above rejection), since the same compound (a compound of formula I) is being administered to the same subjects (any cell). In other words, products of identical or similar composition cannot exert mutually exclusive properties when administered under the same or similar circumstances.
In other words, even though the prior art is silent regarding “inhibiting human epithelial 15-(S)-lipoxygenase”, by practicing the method taught by the prior art: "the administration of a compound of formula I to any cell", one will also be “inhibiting human epithelial 15-(S)-lipoxygenase” even though the prior art was not aware of it.
Apparently, Applicant has discovered a new property or advantage (“inhibiting human epithelial 15-(S)-lipoxygenase”) of the method taught by the prior art ("the administration of a compound of formula I to any cell).
MPEP 2112 I states: “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”
Regarding claims 13-14, as seen above, Arrhenius teaches a method of treating a cardiovascular disease with a compound of instant formula I.
Claim(s) 1-4, 6-7 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 2325388-93-8, which entered STN on June 6th, 2019.
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This compound is embraced by formula I, wherein R1, R2, R4, R5 are hydrogen, R3 is halogen, R11 and R12 are hydrogen, n is 1, X is S and R6-R10 are hydrogen.
Regarding claim 2, X is S.
Regarding claim 3, n is 1.
Regarding claim 4, R11 and R12 are hydrogen.
Regarding claim 6, R3 is halogen.
Regarding claim 7, R3 is fluorine.
Regarding claim 10, the compound is compound 102.
Claim(s) 1-2, 4-5 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1669427-96-6, which entered STN on March 25th, 2015.
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This compound is embraced by instant formula I, wherein R1, R2, R4 and R5 are hydrogen, R3 is methyl, n is 0, X is S, R11 and R12 are hydrogen, R6, R7, R9 and R10 are hydrogen and R8 is methyl.
Regarding claim 2, X is S.
Regarding claim 4, R11 and R12 are hydrogen.
Regarding claim 5, R8 is methyl.
Regarding claim 8, R3 is methyl.
Claim(s) 1-2, 4-5 and 8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Morganroth et al (WO 2022/108980 A1, which claims priority to 63/114,760, filed November 17th, 2020, the priority document has been appended to the reference).
Morganroth teaches a method of preventing or treating necroinflammation associated with a neurodegenerative disorder in a subject in need thereof, the method comprising administering a therapeutic effective amount of the following compound (claims 12 and 19, which finds support in claim 12 and page 33 of the specification of the priority document):
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This compound is embraced by instant formula I, wherein R1-R5 are hydrogen, n is 1, X is S, R11 is substituted alkyl, R12 is hydrogen and R6-R10 are hydrogen.
Regarding claim 2, X is S.
Regarding claim 3, n is 1.
Regarding claim 12, the prior art is silent regarding “inhibiting human epithelial 15-(S)-lipoxygenase”. However: “inhibiting human epithelial 15-(S)-lipoxygenase” will inevitably flow from the teachings of the prior art (see above rejection), since the same compound (a compound of formula I) is being administered to the same subjects (any cell). In other words, products of identical or similar composition cannot exert mutually exclusive properties when administered under the same or similar circumstances.
In other words, even though the prior art is silent regarding “inhibiting human epithelial 15-(S)-lipoxygenase”, by practicing the method taught by the prior art: "the administration of a compound of formula I to any cell", one will also be “inhibiting human epithelial 15-(S)-lipoxygenase” even though the prior art was not aware of it.
Apparently, Applicant has discovered a new property or advantage (“inhibiting human epithelial 15-(S)-lipoxygenase”) of the method taught by the prior art ("the administration of a compound of formula I to any cell).
Regarding claims 13 and 15, as seen above, Morganroth teaches a method of treating a neurodegenerative disease with a compound of instant formula I.
Correspondence
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/A.G.K./Examiner, Art Unit 1626
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699