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
Filing Receipt and Priority
The filing receipt mailed 06/27/2024 states that the instant application claims benefit of provisional application 63/491,184, filed 03/20/2023.
The provisional application supports the instant claims. Therefore, the effective filing date is 03/20/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted 08/01/2024 has been considered.
Restriction/Species Election
Applicant’s election without traverse of Group I, claims 1-10, is acknowledged.
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At examiner’s discretion, search and examination has been broadened to include the full scope of compound of general formula (I), shown below.
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Claims 11-20 are hereby withdrawn being drawn to a non-elected invention.
Claim Objections
Claim 4 contains the typo “Rc6” where it should state “R6c”.
Rejections
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.
KSR Rationale
The MPEP in section 2143, subsection I gives examples of Rationales for supporting a conclusion of obvious. These rationales are non-exhaustive and include (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Szumski (Synlett, 2021, 32, 1141-1145).
Claim 1 claims a compound of formula (I), shown above.
Claims 2-3 are drawn to embodiments wherein at least one to all of R1-R3 are either C1-C6 alkyl (claim 2) or CH3 (claim 3).
Claim 4 claims embodiments wherein L is one of the following
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or R5 is one of the following
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.
Regarding claims 1-4, Szumski on p. 1142, Fig. 2 teaches the following compound 3a.
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Compound 3a differs from the instant claims in that the alkynylenyl-aryl of R4 (instant claim 1) is located at the R3 position instead. R1 and R2 are methyl and halogen, respectively, which embrace the limitations of claims 2-3. The substituted aryl group embraces the limitations of claim 4.
The compounds are positional isomers and one of ordinary skill would expect similar properties between the two. The MPEP states:
“"An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).”
One of ordinary skill in the art would be able to reach the instant claims by modifying the compound of Szumski to have the alkynylenyl-aryl moiety at position R4 instead of R3.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art to have modified the compound of Szumski to arrive at the instant claims. One of ordinary skill would be motivated to make the modification as one of ordinary skill would expect the compounds to have similar properties.
Allowable Subject Matter
Claims 5-10 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Claims 1-4 are rejected.
Claims 5-10 are objected against.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUISALBERTO GONZALEZ whose telephone number is (571)272-1154. The examiner can normally be reached M-F 8:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUISALBERTO GONZALEZ/Examiner, Art Unit 1624
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