DETAILED ACTION
This action is in response to Applicant’s submission dated August 28, 2026, in which Applicant amended claims 1, 134, 143, 146, and 153, and canceled claims 151-152.
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 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.
Claim 153, as amended, is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Robbins, et al, WO 2020/081450 by Nurix Therapeutics, which published on April 23, 2020 (more than a year of the priority date of July 14, 2021 for the instant application). Robbins, et al. teaches bifunctional compounds for degrading BTK via ubiquitin proteosome pathway, which include instant compounds. Specifically, the compounds with the structure:
PNG
media_image1.png
326
582
media_image1.png
Greyscale
and
PNG
media_image2.png
286
628
media_image2.png
Greyscale
of the reference anticipates the aforementioned amended claim. The references compounds exhibit the same activity as the compounds of the instant claims.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 148-150 and 153 are rejected under 35 U.S.C. 103 as being rendered obvious by Robbins, et al, WO 2020/081450 by Nurix Therapeutics, see supra.
Determining the scope and contents of the prior art.
Specifically, the compounds:
PNG
media_image3.png
372
680
media_image3.png
Greyscale
,
PNG
media_image4.png
276
654
media_image4.png
Greyscale
, and
PNG
media_image5.png
284
554
media_image5.png
Greyscale
render the rejected claims obvious. The references compounds exhibit the same activity as the compounds of the instant claims.
Ascertaining the difference between the prior art and the claims at issue.
The reference differs from the claims at issue in that they are stereoisomers of one another. “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds … a known compound may suggest its analogs or isomers, either geometric isomers (cis v. trans) or position isomers (e.g., ortho v. para).” In re Deuel 34 USPQ2d 1210, 1214. See also MPEP 2144.09, second paragraph. Here, the former geometric isomers (cis v. trans) applies.
Resolving the level of skill in the art.
The Court has addressed this obviousness issue: “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 12 (2007). “When there is a design need or market pressure to solve a problem and there are finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, … the fact that a combination was obvious to try might show that it was obvious”. Id. at 17. That is exactly the case here. The scope of geometric isomers is a very finite list (2) and Applicant was not left to pick and choose from a generic disclosure which compound(s) should be tested.
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 extension fee 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to ERICH A LEESER whose telephone number is (571) 272-9932. The Examiner can normally be reached Monday through Friday from 10-6 PST, M-F. PST.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Mr. James Alstrum-Acevedo can be reached at (571) 272-5548. The fax number for the organization where this application is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) toll-free at 866-217-9197. If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERICH A LEESER/Primary Examiner, Art Unit 1622
United States Patent and Trademark Office
Tel. No.: (571) 272-9932
