DETAILED ACTION
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 .
Applicant’s amendments filed 8/12/2024 have been entered.
Claims 1, 3-6, 9-21 are pending.
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(s) 1, 3-6, 9-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2019/191679 (‘679), from IDS filed 8/12/2024.
‘679 teaches a method of using JAK inhibitors such as l-{l-[3-fluoro-2- (trifluoromethyl)isonicotinoyl]piperidin-4-yl}-3[4-(7H-pyrrolo[2,3-d]pyrimidin-4-yl)- lH-pyrazol-l -yl]azetidin-3-yl}acetonitrile and 4-[3-(cyanomethyl)-3-(3',5'-dimethyl-lH,rH-4,4'-bipyrazol-l-yl)azetidin-l- yl]-2,5-difluoro-N-[(lS)-2,2,2-trifluoro-l-methyl ethyl]benzamide for treating inflammatory skin diseases (see the abstract, also page 31-32, Table 3, Compounds 1-2, claim 24). ‘679 teaches the skin diseases suitable for JAK inhibitor treatment include Lichen Planus (see claim 25). ‘679 also teaches ruxolitinib as useful as JAK inhibitor for treating inflammatory skin disease (see claim 23).
‘679 does not expressly teach the use of ruxolitinib and l-{l-[3-fluoro-2- (trifluoromethyl)isonicotinoyl]piperidin-4-yl}-3[4-(7H-pyrrolo[2,3-d]pyrimidin-4-yl)- lH-pyrazol-l -yl]azetidin-3-yl}acetonitrile or 4-[3-(cyanomethyl)-3-(3',5'-dimethyl-lH,rH-4,4'-bipyrazol-l-yl)azetidin-l- yl]-2,5-difluoro-N-[(lS)-2,2,2-trifluoro-l-methyl ethyl]benzamide in the method of treating Lichen Planus.
It would have been obvious to one of ordinary skill in the art at the time of filing to employ ruxolitinib and l-{l-[3-fluoro-2- (trifluoromethyl)isonicotinoyl]piperidin-4-yl}-3[4-(7H-pyrrolo[2,3-d]pyrimidin-4-yl)- lH-pyrazol-l -yl]azetidin-3-yl}acetonitrile or 4-[3-(cyanomethyl)-3-(3',5'-dimethyl-lH,rH-4,4'-bipyrazol-l-yl)azetidin-l- yl]-2,5-difluoro-N-[(lS)-2,2,2-trifluoro-l-methyl ethyl]benzamide in the method of treating Lichen Planus.
One of ordinary skill in the art would have been motivated to employ ruxolitinib and l-{l-[3-fluoro-2- (trifluoromethyl)isonicotinoyl]piperidin-4-yl}-3[4-(7H-pyrrolo[2,3-d]pyrimidin-4-yl)- lH-pyrazol-l -yl]azetidin-3-yl}acetonitrile or 4-[3-(cyanomethyl)-3-(3',5'-dimethyl-lH,rH-4,4'-bipyrazol-l-yl)azetidin-l- yl]-2,5-difluoro-N-[(lS)-2,2,2-trifluoro-l-methyl ethyl]benzamide in the method of treating Lichen Planus. Since the herein claimed compounds and ruxolitinib are known to be useful in treating Lichen Planus, concomitantly employing two agents, which are known to be useful to treat lichen planus individually, into a single method useful for the very same purpose is prima facie obvious (See In re Kerkhoven 205 USPQ 1069 (CCPA 1980)).
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAN MING R HUI whose telephone number is (571)272-0626. The examiner can normally be reached Mon - Fri 9:30-5:30.
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, Kortney Klinkel can be reached at 571-270-5239. 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.
/SAN MING R HUI/Primary Examiner, Art Unit 1627
Prosecution Insights