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 .
Non-Final Rejection
The Status of Claims:
Claims 1-7 are pending.
Claims 1, 4-5 and 7 are rejected.
Claims 2-3 are objected.
Claim 6 is allowable.
DETAILED ACTION
1. Claims 1-7 are under consideration in this Office Action.
Priority
2. It is noted that this application is a continuation of 18682091 02/07/2024 ,which is is a 371 of PCT/CN2023/094871 05/17/2023 , which has a foreign priority documents, CHINA CN202210548373.7 05/17/2022; CHINA CN202210695557.6 06/15/2022; CHINA CN202211002496.7 08/19/2022 ; and CHINA CN202310213459.9 03/07/2023.
Drawings
3. None.
IDS
4. The IDS filed on 10/02/2024 are reviewed by the examiner.
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 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.
Claim Objections
Claims 2-3 are 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.
Claim Rejections - 35 USC § 112
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.
Claim 7 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 7, the phrase” treating diseases related to RNA-dependent RNA polymerase inhibitor “ is recited. This expression can be vague and indefinite because the claim does not explain how the diseases are related to RNA-dependent RNA polymerase inhibitor in the claim. The examiner recommends to put the specific names for the diseases related to RNA-dependent RNA polymerase inhibitor in the claim
Claim Rejections - 35 USC § 103
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.
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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
5. Claims 1, and 4-5 are rejected under 35 U.S.C. 103 as being unpatentableover Zhang et al et al (US2024/0317754 A1) , which is equivalent to Zhang et al et al (CN 113735862).
Applicant claims the followings:
1. A compound of formula (VI-1), a stereoisomer thereof, or a pharmaceutically acceptable salt thereof,
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238
370
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64
230
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; wherein R2 and R3 are each independently selected from hydrogen, C1-6 alkyl-C(=O)-, C1-4 alkoxy-C(=O)-, and phenyl-C(=O)-, and the C1-6 alkyl, C1-4 alkoxy, and phenyl are each independently and optionally substituted by 1, 2, or 3 R; R5 is selected from phenyl, and the phenyl is optionally substituted by 1, 2, or 3 R; each R is independently selected from hydroxyl, halogen, amino, and cyano.
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64
230
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.
4. The compound, the stereoisomer thereof, or the pharmaceutically acceptable salt thereof according to claim 1, wherein R2 and R3 are each independently selected from hydrogen, isopropyl-C(=O)-, and phenyl-C(=O)-, and the isopropyl and phenyl are each independently and optionally substituted by 1, 2, or 3 R.
5. The compound, the stereoisomer thereof, or the pharmaceutically acceptable salt thereof according to claim 4, wherein R2 and R3 are each independently selected from hydrogen, isopropyl-C(=O)-, and .
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100
96
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.
Determination of the scope and content of the prior art
Zhang et al discloses the following compound with an anti-viral activity:
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355
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(see page 27, a paragraph##0220, compound# ATV13).
The current invention, however, differs from the prior art in that the deuterium atom being connected to furan in the claimed compound is unspecified in the prior art.
Ascertainment of the difference between the prior art and the claims
The difference between the instant application and the applied Zhang et al Cowen art is that the Zhang et al does not expressly teach the claimed deuterium atom being connected to furan in the claimed compound.
Resolving the level of ordinary skill in the pertinent art.
Regarding the Claims 1 and 4-5, with respect to the lack of disclosing the claimed deuterium atom being connected to furan in the claimed compound, the prior art is silent about it. However, those skilled in the art know that deuterium atom is an isotope atom of hydrogen atom, which has similar chemical properties, and the prior art provides a technical motivation that the hydrogen atom can be replaced by a deuterium atom ( see page 37, the general formula of claim 1 ).
Thus, in order to obtain a series of compounds with antiviral activity, the skilled artisan in the art is motivated to replace hydrogen atoms with deuterium atoms on the basis of existing technology.
So, if the skilled artisan in the art had desired to test a particular compound having deuterium atom being connected to furan in the Zhang’s compound as an alternative, it would have been obvious to the skilled artisan in the art before the effective filing date of the claimed invention to be motivated to form the compound and evaluate its antiviral activity.
This is because the skilled artisan in the art would expect such a procedure to be feasible and successful as guidance shown the prior art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Zhang et al expressly discloses the following compound with an anti-viral activity:
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355
346
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.
Although the Zhang et al does not teach the claimed deuterium atom being connected to furan in the claimed compound, the prior art does specify indirectly that a deuterium can be substituted for any variable of R7 and R8 in the formula (I) (see page 37, claim 1). Not only this information, but also, it is well-known knowledge in the art that deuterium atom is an isotope atom of hydrogen atom, which has similar chemical properties.
Thus, in order to obtain a series of compounds with antiviral activity, the skilled artisan in the art is motivated to replace hydrogen atoms with deuterium atoms on the basis of existing technology.
So, if the skilled artisan in the art had desired to test a particular compound having deuterium atom being connected to furan in the Zhang’s compound as an alternative, it would have been obvious to the skilled artisan in the art before the effective filing date of the claimed invention to be motivated to form the compound and evaluate its antiviral activity.
This is because the skilled artisan in the art would expect such a procedure to be feasible and successful as guidance shown the prior art.
Conclusion
Claims 1, 4-5 and 7 are rejected.
Claims 2-3 are objected.
Claim 6 is allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR V OH whose telephone number is (571)272-0689. The examiner can normally be reached on 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Jiang can be reached on 571-272-0627. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAYLOR V OH/Primary Examiner, Art Unit 1625 5/29/2026
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