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 .
Claims 16-30 are currently pending.
Priority
The instant application claims priority as follows:
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Response to Election/Restriction
Applicant’s election, with traverse, of Group I, claims 16-27, drawn to a compound of Formula I
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, and species compound
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(as the third compound in line 6 of claim 24), in the reply filed on May 27, 2026 is acknowledged. Claims 16-27 read on the elected species.
The traversal is on the grounds that according to MPEP 803, the inventions must be independent or distinct as claimed; and that there must be a serious burden on the Examiner if restriction is not required.
Applicant’s arguments are found unpersuasive for the reasons of record and the following reasons. This application is a National Stage Application submitted under 35 USC 371, and as such unity of invention (not restriction practice pursuant to 37 CFR 1.141 - 1.146 ) is applicable. See MPEP 1893.03(d). The examiner previously stated that under PCT Rule 13.1 and 13.2 the claims herein lack unity of invention. Arguments that the search would not impose a serious burden on the Office or, that the inventions are not independent or distinct, are not germane to the showing of Lack of Unity. Thus, for the reasons of record, the inventions currently claimed in this application lack the same or corresponding special technical features.
The requirement is deemed proper and therefore made FINAL.
Claims 28-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 05/27/2026.
Examination
Examination will begin with the elected species. In accordance with MPEP § 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the non- elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during further examination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final.
The elected species
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was searched and was found free of the prior art. The Examiner expanded the search and examination to the compounds of claims 22. For the purpose of a compact prosecution, the examiner used the same uncovered art in other rejections below rejection below. The prior art search will not be extended unnecessarily to cover all non-elected species. Subject matter outside of the searched/examined scope and claims 16-21 and 24-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions there being no allowable generic or linking claim.
Claims 16-27 are the subject of this Office Action.
Improper Markush Rejection
Claims 16-21, 26 and 27 are rejected as being drawn to an improper Markush group of alternatives. The claims are drawn to multiple inventions due to the lack of a common core between the compounds and the unlimited variations in the variables. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of the rejected claims is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use. There are marked structural differences in the scope of compounds claimed, including the lack of a common core. See all the variables and distinct classes of rings encompassed by the definitions for
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and
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. There is lack of a substantial structural feature shared in formula (I), (Ia) and (II). A common use would not be expected from the structurally dissimilar compounds.
In re Thompson and Tanner, 69 USPQ 148, In re Swenson, 56 USPQ 180, and In re Kingston, 65 USPQ 371. Note In re Milas 71 USPQ 212 in which the structural difference between vitamin A and D was sufficient to uphold the improper Markush rejection. Also see In re Winnek 73 USPQ 225 and In re Ruzicka 66 USPQ 226 in which structural differences were small and yet a similar holding was maintained. All these cases involved compounds in the pharmaceutical art known to be structure-sensitive. Of particular interest is Ex Parte Hozumi, 3 USPQ2d 1059, which reversed an improper Markush rejection “in view of the relatively large proportion of the structure of the compounds in the claimed class which is common to the entire class”. In contrast, the amount of structural variation present herein is enormous given the presence of no fixed core (e.g., tetrazine-pyrimidinyl-
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, phenyl-phenyl-O-(CH2)3CH3, pyridyl-pyridyl-
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, etc.) and all the variables with their extensive variations, which are not all considered as art-recognized equivalents. All these cases involved compounds in the pharmaceutical art known to be structure-sensitive.
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(s) 16-21 and 26 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Bronson et al. (US 2018/0346440).
The prior art teaches the following particular embodiment at p. 2-3:
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, wherein
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, wherein
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This particular aspect taught by Bonson is thus limited to a structure with only variable substituent R5, which is limited to six groups.
In the instant case, Bronson’s fourth embodiment of the second aspect of formula (II) above, with its substituents is so limited that the ordinary artisan would have at once envisaged the claimed species wherein R5 is H, ethyl (CH2-CH3), difluoromethyl (CHF2) and trifluoromethyl (CF3).
Pharmaceutical compositions comprising the compounds and a carrier are taught in at least para [0033]. Thus, claims 16-17, 20 and 26 are anticipated by Bronson.
See MPEP 2131.02: “If one of ordinary skill in the art is able to "at once envisage" the specific compound within the generic chemical formula, the compound is anticipated. One of ordinary skill in the art must be able to draw the structural formula or write the name of each of the compounds included in the generic formula before any of the compounds can be "at once envisaged." That is the case here.
See also MPEP 2144.08: “A genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because "one skilled in [the] art would... envisage each member" of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962) (emphasis in original).”
In addition, the reference teaches a compound of formula
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in which R41 and R61 form a heterocycle (Example 326 at p. 157- anticipates claims 16-20),
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(Ex. 17- anticipates claims 16-18, 20),
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(Example 177- anticipates claims 16-18 and 20-21), Example 178,
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(Example 273- anticipates claims 16-18, 20), and others.
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.
Claim 16-27 are rejected under 35 U.S.C. 103 as being unpatentable over Bronson et al. (US 2018/0346440), further in view of Bundrant (Clinical Therapeutics, 43(6), 1029-1050, June 2021).
Applicant claims the compounds of formula
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,
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and
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Determination of the Scope and Content of the Prior Art (MPEP §2141.01)
Bronson teaches compounds of formula
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as AAK1 inhibitors, such as compound of formula
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(Example 123). Bronson teaches “Pharmaceutical formulations may be present in unit dose forms containing predetermined amount of active ingredient per unit dose. Dosage levels of between about 0.01 and about 250,illigram per kilogram (“mg/kg”) body weight per day, preferably between about 0.05 and about 100 mg/kg body weight per day of the compounds of the present disclosure are typical in a monotherapy for the prevention and treatment of disease,” ([0055]). If we assume the average body weight to be between 60-80kg then, the reference range would be 3 mg- 8,000mg, which encompasses the entire instant claimed range of claim 27.
Bundrant teaches that the compound of formula
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(LX-9211) is a potent AAK1 inhibitor (page 1030, col. 2)
Ascertainment of the Difference Between the Prior Art and the Claims
(MPEP §2141.012)
The difference between Bronson or Bundrant and the instant claimed compounds is one or two methylene groups at the alkyl chain. Thus, they are related as alkyl homologs.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
The level of ordinary skill in the art is high. Someone preparing these compounds would be trained in organic chemistry and would recognize the very close structural similarity and would expect them to have similar properties.
One of ordinary skill would have been motivated to make the alkyl homolog/ alkyl isomer of the active compound of Bronson or Bundrant above. Compounds that differ only by the presence or absence of an extra methyl group or two are homologues. Homologues are of such close structural similarity that the disclosure of a compound renders prima facie obvious its homologue. It is well established that position isomers and homologs are prima facie structurally obvious even in the absence of a teaching to modify. The isomer is expected to be preparable by the same method and to have generally the same properties. This expectation is then deemed the motivation for preparing the adjacent homolog. This circumstance has arisen many times. Such a variation is considered obvious because of the close structural similarity. See specifically In re Shetty, 195 USPQ 753; In re Wilder, 195 USPQ 426 and Ex Parte Greshem, 121 USPQ 422, all of which feature a compound with a C2 link rejected over a compound with a C1 link. Similarly, In re Chupp, 2 USPQ2d 1437 and In re Coes, 81 USPQ 369 have a compound with a C1 link unpatentable over prior art showing C2 link. Note Ex parte Agouridas, 65 USPQ2d 1142, where a C4 chain was held obvious over a C3 chain. Note also In re Schaub, 190 USPQ 324, 326, where compounds with C5 and C6 chains were called “adjacent homologs in the classic sense”. Ex parte Ruddy, 121 USPQ 427 has a C3 link unpatentable over a C1 link. Ex parte Nathan, 121 USPQ 349 found the insertion of a C2H4 link obvious. In all of these cases, the variation was found to be obvious on the basis of close structural similarity; no secondary teaching was employed.
As was stated directly in THE GENERAL TIRE & RUBBER COMPANY v. JEFFERSON CHEMICAL COMPANY, INC., 182 USPQ 70 (1974): “If any structural change is obvious to one skilled in the art, a substitution of the next higher homolog would seem to be.” Note also In re Jones, 21 USPQ2d 1942, which states at 1943 “Particular types or categories of structural similarity without more, have, in past cases, given rise to prima facie obviousness”; one of those listed is “adjacent homologues and structural isomers”. Similar is In re Schechter and LaForge, 98 USPQ 144, 150, which states “a novel useful chemical compound which is homologous or isomeric with compounds of the prior art is unpatentable unless it possesses some unobvious or unexpected beneficial property not possessed by the prior art compounds.” Note also In re Deuel 34 USPQ2d 1210, 1214 which states, “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties.”
The analysis above is consistent with MPEP 2144.09 which provides guidelines for the examination of applications when close structural similarity exists.
In addition, under the Supreme Court rationales in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007), at least exemplary rationales (A) and (C) apply:
(A) Combining prior art elements according to known methods to yield predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way.
Regarding claim 27, the artisan would have been motivated to select a pharmaceutical composition comprising the compound in any of the amounts of from 3 mg- 8,000mg and the carriers, as it was suggested by Bundrant.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16-27 are rejected 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a written description rejection, rather than an enablement rejection under 35 U.S.C. 112, first paragraph.
The claims are drawn to compounds of Formula (I), “a metabolite”, or "a prodrug" thereof. The specification fails to describe the genus of “a metabolite” or "a prodrug" of compounds of Formula (I) and the process of making and using them.
Applicant is directed to the Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112, 1st "Written Description" Requirement, Federal Register, Vol. 66, No. 4, pages 1099-1111, Friday January 5, 2001.
Vas-Cath Inc. V. Mahurkar, 19 USPQ2d 1111, states that Applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The courts have stated:
“To fulfill the written description requirement, a patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that "the inventor invented the claimed invention." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (1997); In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (" [T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed."). Thus, an applicant complies with the written description requirement "by describing the invention, with all its claimed limitations, not that which makes it obvious," and by using "such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention." Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966.” Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
To provide adequate written description and evidence of possession of a claimed genus, the specification must provide sufficient distinguishing characteristics of the genus. The factors to be considered include disclosure of complete or partial structure, physical and/or chemical properties, functional characteristics, structure/function correlation, methods of making the claimed product, or any combination thereof.
A description of a genus may be achieved by means of a recitation of a representative number of species falling within the scope of the genus or of a recitation of structural features common to the members of the genus, which features constitute a substantial portion of the genus. Regents of the University of California v. Eli Lilly & Co., 119 F3d 1559, 1569, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997). In Regents of the University of California v. Eli Lilly (43 USPQ2d 1398-1412), the court held that a generic statement which defines a genus of nucleic acids by only their functional activity does not provide an adequate written description of the genus. The court indicated that, while applicants are not required to disclose every species encompassed by a genus, the description of the genus is achieved by the recitation of a representative number of species falling within the scope of the claimed genus. At section B(i), the court states, "An adequate written description of a DNA ... requires a precise definition, such as by structure, formula, chemical name, or physical properties, not a mere wish or plan for obtaining the claimed chemical invention."
In the instant case, the only guidance concerning prodrugs, metabolites or esters in the instant specification is a generic definition of the terms prodrug and metabolites and a mention of some general groups that may be added to make a prodrug (paragraphs [0096-0097]).
“The examples and description should be of sufficient scope as to justify the scope of the claims”. See MPEP § 608.01(p). If a representative number of adequately described species are not disclosed for a genus, the claim to that genus must be rejected as lacking adequate written description under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1 (MPEP 2163).
There is no description of what a “prodrug” or a “metabolite” of the compounds would be or look like. Finding a prodrug is an empirical exercise. Predicting if a certain ester of a claimed compound, for example, is in fact a prodrug that produces the active compound metabolically in man, at a therapeutic concentration and at a useful rate, is filled with experimental uncertainty. Although attempts have been made to predict drug metabolism de novo, this is still an experimental science. For a compound to be a prodrug, it must meet three tests. It must itself be biologically inactive. It must be metabolized to a second substance in a human at a rate and to an extent to produce that second substance at a physiologically meaningful concentration. Thirdly, that second substance must be clinically effective. First, preparing, then determining whether a particular compound meets these three criteria in a clinical trial setting requires a large quantity of experimentation. Applicants do not describe the structural features of prodrugs that would meet those three criteria. There is no representative example or structure to support the claimed genus of prodrugs or metabolites.
A metabolite is a substance made when the body breaks down chemical/compound. Metabolites are products of the metabolic process of a particular organism. Different organisms may produce different metabolites. There is no representative structure or example of metabolites. Different compounds may produce different metabolites; there’re millions of compounds claimed here. In the instant case, there is no guidance about the range of products and structures included in the claims that may result for example from oxidation, reduction, hydrolysis, amidation, deamidation, esterification, … enzyme cleavage, and the like, of the administered compounds to different organisms, or different cells.
It is unquestionable that the claims are broad and generic with respect to all possible compounds encompassed by the claims: the possible structural variations are limitless to any metabolites, or prodrugs of the compounds of Formula (I). In the instant case, however, the specification does not disclose a sufficient variety of species to reflect this variance in the genus. The specification does not describe in sufficient detail the myriad of compounds embraced by the genus of prodrugs, and metabolites of compounds of Formula (I) in the claims and how to make them, and does not reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the entire scope of the claimed invention.
This rejection would be overcome by amending the claims to remove the terms, “metabolite”, and “prodrug”.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The claims recite “a metabolite” thereof. The scope of the compounds included by this term is unclear. A metabolite is a substance made when the body breaks down chemical/compound. Metabolites are products of the metabolic process of a particular organism. Different organisms may produce different metabolites. Different compounds may produce different metabolites; there are millions of compounds claimed having Formula (I). The specification provides the following guidance:
A “metabolite” is “a product produced through metabolism in the body of a specified compound or salt thereof. The metabolites of a compound may be identified using routine techniques known in the art and their activities determined using tests such as those described herein. Such products may result for example from oxidation, reduction, hydrolysis, amidation, deamidation, esterification, deesterification, enzyme cleavage, and the like, of the administered compound. Accordingly, the invention includes metabolites of compounds disclosed herein, including metabolites produced by contacting a compound disclosed herein with a mammal for a sufficient time period.
One of ordinary skill in the art would not know the range of products and structures included in the claims that may result, for example, from oxidation, reduction, hydrolysis, amidation, deamidation, esterification, … enzyme cleavage, and the like, of the administered compounds to different organisms, or different cells.
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.
Claim 20 is 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. Claim 20 depends of claim 16, however, includes a heterocyle for R41 and R42with an N atom. 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.
Conclusion
Claims 16-27 are rejected. No claim is allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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, Clinton Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VALERIE RODRIGUEZ-GARCIA/ Primary Examiner, Art Unit 1621
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