DETAILED ACTION
This Office action details a first action on the merits for the above referenced application No. Claims 1-20 are pending in this application.
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
This application is a 35 USC 111(a) filing that claims benefit under 35 USC 120 as a continuation of US application No. 17/675,252 filed on 15 Mar. 2022, which is a continuation of US application No. 16/424,366 filed on 28 May 2019 (now US 11,279,691 ), which is a continuation of 16/001,883 filed on 6 Jun. 2018, which is a continuation of 14/770,759 filed on 26 Aug. 2015, which is 35 USC 371 National Stage filing of international application No. PCT/US2014/021426 filed on 6 Mar. 2014 and claims benefit under 35 USC 119(e) to US provisional application No. 61/786,288 filed on 14 Mar. 2013.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3 Jul. 2025 has been considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16 in the reply filed on 25 Jun. 2026 is acknowledged.
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 25 Jun. 2026.
Applicant’s election without traverse of 5-[[5-(3-chlorophenyl)-6-methoxypyridin-3-yl]methyl]pyrimidin-2-amine, claims 11-12, 14, and 16 in the reply filed on 25 Jun. 2026 is acknowledged.
Claims 1-10, 13, 15, and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 25 Jun. 2026.
PNG
media_image1.png
368
233
media_image1.png
Greyscale
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(s) 11-12, 14, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Singh et al. (US 2009/0324569 A1; published 31 Dec. 2009; see IDS filed on 3 Jul. 2025).
Singh et al. teach biaryl PDE4 inhibitors for treating inflammatory, cardiovascular and CNS disorders (see title). Singh et al. teach that the compounds of the present invention are non-competitive inhibitors of cAMP while being gene-specific inhibitors (PDE4D) and a person of ordinary skill in the art would expect to compounds to be useful as anti-inflammatory agents for the treatment, amelioration or prevention of inflammatory diseases and useful as CNS agents for amelioration of the cognitive decline in AD, PD, the treatment of schizophrenia and depression, and neuroprotective in HD. Singh et al. teach the compound P-395
PNG
media_image2.png
171
212
media_image2.png
Greyscale
(pgs. 24, 33, 213) belonging to activity class A, <5 µM. Singh et al. teach compound P-379
PNG
media_image3.png
153
204
media_image3.png
Greyscale
(pg. 24, 34, 196) belonging to activity class A, < 5 µM. Singh et al. teach compound P-252
PNG
media_image4.png
137
208
media_image4.png
Greyscale
(pgs 23, 24, 221) belonging to activity class A, < 5 µM. Singh et al. disclose P-550
PNG
media_image5.png
148
252
media_image5.png
Greyscale
(pgs. 22, 35, 39, 105) belonging to activity class A, < 5 µM). (Compound P-550 reads on a compound of Formula (I)
PNG
media_image6.png
138
125
media_image6.png
Greyscale
wherein R1=H; Y=-C(Ra)2-, Ra=H; R2=Ph-NH(CO)NH2; R3=3-Ph-Cl; and R4= Me (C1alkyl).)
Singh et al. teach pharmaceutical compositions comprising a pharmaceutically acceptable excipient ([0052]).
Singh et al. do not teach 5-[[5-(3-chlorophenyl)-6-methoxypyridin-3-yl]methyl]pyrimidin-2-amine.
However, it would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the compound of Singh et al. (P-550 and pharmaceutical compositions thereof comprising a pharmaceutically acceptable excipient) by substituting the C-F with =N- and by substituting the phenyl urea with pyrimindin-2-amine to arrive at 5-[[5-(3-chlorophenyl)-6-methoxypyridin-3-yl]methyl]pyrimidin-2-amine as taught by Singh et al. because the substituting would have been expected to provide an equivalent PDE4 inhibitor advantageously belonging to the same activity class and advantageously being useful as an anti-inflammatory agent and being useful as a CNS agent for amelioration of the cognitive decline in AD, and PD and neuroprotective in HD.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11-12, 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,040,692 B2, in view of Singh et al. (US 2009/0324569 A1; published 31 Dec. 2009; see IDS filed on 3 Jul. 2025).
Claim 1 of U.S. Patent No. 9,040,692 B2 claims the compound
PNG
media_image7.png
113
168
media_image7.png
Greyscale
. (This reads on the elected species and a compound of instant formula I wherein Z=CH; R1=H; R2=pyrimidin-2-amine (six-membered monocyclic heteroaromatic containing 2 nitrogens substituted with -N(Rb)2, Rb=H); R3=Ph substituted with Cl; and R4=Me.)
Claim 1 of U.S. Patent No. 9,040,692 B2 do not claim a pharmaceutical composition of the above compound and a pharmaceutically acceptable excipient.
Singh et al. teach as discussed above.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify claim 1 of U.S. Patent No. 9,040,692 B2 to include a pharmaceutical composition comprising the above compound and a pharmaceutically acceptable excipient as taught by Singh et al. because the pharmaceutically composition would have been expected to enable administration of the compound for the treatment of PDE4 associated disease.
Claims 11-12, 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,573,937 B2, in view of Singh et al. (US 2009/0324569 A1; published 31 Dec. 2009; see IDS filed on 3 Jul. 2025).
Claims 1-20 of U.S. Patent No. 9,573,937 B2 claim
PNG
media_image8.png
368
233
media_image8.png
Greyscale
and pharmaceutical compositions comprising an effective amount of at least one chemical entity of claim 1.
Claims 1-20 of U.S. Patent No. 9,573,937 B2 do not claim a compound of formula I wherein Z= CH or the elected compound 5-[[5-(3-chlorophenyl)-6-methoxypyridin-3-yl]methyl]pyrimidin-2-amine.
Singh et al. teach as discussed above.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify claims 1-20 of U.S. Patent No. 9,573,937 B2 by substituting the pyrazin-2-yl N to arrive at 5-[[5-(3-chlorophenyl)-6-methoxypyridin-3-yl]methyl]pyrimidin-2-amine optionally together with a pharmaceutically acceptable excipient as taught by Singh et al. because the substituting would have been expected to provide an functionally equivalent compound suitable for inhibiting disorders mediated by PDE4.
Claims 11-12, 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 9,120,770 B2, in view of Singh et al. (US 2009/0324569 A1; published 31 Dec. 2009; see IDS filed on 3 Jul. 2025).
Claims 1-30 of U.S. Patent No. 9,120,770 B2 claim 5-[[5-(3-chlorophenyl)-6-methoxypyridin-3-yl]methyl]pyrimidin-2-amine
PNG
media_image1.png
368
233
media_image1.png
Greyscale
. (This reads on the elected species and a compound of instant formula I wherein Z=CH; R1=H; R2=pyrimidin-2-amine (six-membered monocyclic heteroaromatic containing 2 nitrogens substituted with -N(Rb)2, Rb=H); R3=Ph substituted with Cl; and R4=Me.)
Claim 1-30 of U.S. Patent No. 9,120,770 B2 do not claim a pharmaceutical composition of the compound and a pharmaceutically acceptable excipient.
Singh et al. teach as discussed above.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify claim 1 of U.S. Patent No. 9,040,692 B2 to include a pharmaceutical composition comprising the above compound and a pharmaceutically acceptable excipient as taught by Singh et al. because the pharmaceutically composition would have been expected to enable administration of the compound for the treatment of PDE4 associated diseases.
Claims 11-12, 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,279,691 B2.
Claims 1-4 of U.S. Patent No. 11,279,691 B2 claim 5-[[5-(3-chlorophenyl)-6-methoxypyridin-3-yl]methyl]pyrimidin-2-amine
PNG
media_image1.png
368
233
media_image1.png
Greyscale
and claim a pharmaceutical composition comprising an effective amount of the compound and a pharmaceutically acceptable carrier. (This reads on the elected species and a compound of instant formula I in claim 11 wherein Z=CH; R1=H; R2=pyrimidin-2-amine (six-membered monocyclic heteroaromatic containing 2 nitrogens substituted with -N(Rb)2, Rb=H); R3=Ph substituted with Cl; and R4=Me. In addition, this reads on a pharmaceutical composition comprising an effective amount of the compound of claim 11 and a pharmaceutically acceptable excipient.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN R DONOHUE whose telephone number is (571)270-7441. The examiner can normally be reached on Monday - Friday, 8:00 - 5:00 EST.
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, Michael Hartley can be reached on (571)272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618
/SEAN R. DONOHUE/
Examiner, Art Unit 1618
Prosecution Insights