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 .
Priority
Instant application 18/585,551 filed on 02/23/2024 claims benefit as follows:
CONTINUING DATA:
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Status of the Application
Claims 1-20 are pending.
Information Disclosure Statement
IDS documents have not been provided.
Election/Restrictions
Applicant’s election without traverse of Group II in the reply filed on 05/26/2026 is acknowledged.
Claims 1 and 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/26/2026.
Regarding species election, Applicant’s election, without traverse, of:
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in the reply filed on 05/26/2026 is acknowledged.
Claims 4, 7-11 and 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/26/2026.
Claim 6 reads directly on the elected species.
Examination will begin with the elected species. In accordance with the 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 not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
Species Election
Although the elected species is rejected below, the examiner has moved onto alternative species embodied within the general formula recited in instant claim 1, and subsequent examination is based on this species expansion.
Regarding the rejections of the elected species, it should be noted that the applied reference (Viranga et al., European Journal of Medicinal Chemistry, Volume 244, 2022, 114807, ISSN 0223-5234) shares common authors/applicants with the instant application. However, because the applied reference also lists additional authors, it is unclear whether the exceptions based on grace period inventor-originated disclosures apply (see MPEP 2153).
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.
Claims 2, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaim (Laurent El Kaim, Tetrahedron Letters. Vol. 35, No. 36. pp. 66694670. 1994).
Kaim teaches trifluoropyruvamides (see title and Scheme 1):
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Kaim teaches compound 3f (see Table 1).
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The above compound (3 f):
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reads on instant Formula I:
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wherein R2 is H, L is alkyl chain and R1 is a hydrophobic moiety (methoxyphenyl).
Regarding claim 13, it should be noted that the synthesis of the above compound is carried in water (see Scheme 1 and Table 1).
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Compound 3f with water reads on the limitation of instant claim 13, because water is pharmaceutically acceptable diluent and carrier.
Claims 2, 3, 5 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pinot-Périgord (Laurent El Kaïm, Emmanuel Pinot-Périgord, Tetrahedron, Volume 54, Issue 15, 1998, Pages 3799-3806).
Pinot-Périgord teaches compound 3i (see Schame 4 and page 3805, last paragraph):
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Compound 3i falls under instant Formula I:
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wherein R2 is H, L is heteroatom-containing chain and R1 is a phenyl (methoxyphenyl).
Since the term 'chain' is not defined in the instant specification, under the broadest reasonable interpretation, the term includes both linear and branched chains.
Regarding instant claims 5 the branched chain comprises an ether.
Therefore, compound 3i meets all the limitations of instant claims 2, 3, 5 and 12.
Claims 2, 3, 5, 6, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Viranga (Viranga et al., European Journal of Medicinal Chemistry, Volume 244, 2022, 114807, ISSN 0223-5234).
This rejection applies to the elected species.
Viranga teaches deacetylase (HDAC) inhibitors is promising strategy for developing new anticancer agents.
Viranga teaches the elected species (see Table 3, first column):
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Further, Viranga teaches the compound is a histone deacetylase (HDAC) inhibitor. Furthermore, regarding instant claim 13, Viranga teaches the above compound in DMSO (see Inhibitor testing, section 6.3 and IC50 values presented in Table 3). It should be noted that DMSO is pharmaceutically acceptable diluent and carrier.
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 (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 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 13 are rejected under 35 U.S.C. 103 as being unpatentable over Pinot-Périgord (Laurent El Kaïm, Emmanuel Pinot-Périgord, Tetrahedron, Volume 54, Issue 15, 1998, Pages 3799-3806) as applied to claim 2, 3, 5 and 12 above, and further in view of Chaudhari (Chaudhari, Shilpa. Pharmaceutical Excipients: A Review. 2012).
Pinot-Périgord teaches compound 3i (see Schame 4 and page 3805, last paragraph):
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The above compound 3i falls under instant Formula I:
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wherein R2 is H, L is heteroatom-containing chain and R1 is a phenyl (methoxyphenyl).
Pinot-Périgord does not explicitly teach composition comprising a pharmaceutically acceptable diluent, adjuvant or carrier.
However, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to prepare a composition comprising the compound and a carrier, because pharmaceutically acceptable diluents are well known in the art. For example, see Table 1 in Chaudhari (page 28).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IZABELA SCHMIDT whose telephone number is (703)756-4787. The examiner can normally be reached Monday - Friday from 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton A 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.
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/I.S./Examiner, Art Unit 1621
/GEORGE W KOSTURKO/Primary Examiner, Art Unit 1621
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