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
This Office Action is responsive to the Response to Election/Restriction filed 04/15/2026.
The Preliminary Amendment filed 02/15/2024, amended claims 7-10.
Claims 1-10 are pending.
Priority
This application claims the following priority:
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Election/Restrictions
Applicant's election with traverse of Group I, the compound and compositions, thereof, and
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as the species of a compound of formula (I), in the reply filed on 04/15/2026, is acknowledged.
The traversal is on the ground(s) that Groups I-III share a common technical feature of formula (I), and that there is therefore unity of invention in Groups I-III. On pg. 3, Remarks, Applicant then argues that under MPEP 806.05(h), a product and a method of using that product are generally not independent invention, and that under MPEP 803, restriction is proper where examination would impose a serious burden and that the Restriction Requirement Office Action, showed no such burden in view of distinct fields of search, different classifications, or different search strategies.
Regarding MPEP 806.05(h) and 803, it is respectfully pointed out that these portions of the MPEP are directed to US restriction practice, and not toward unity of invention. Since the instant application is a 371 national stage application, the restriction requirement was made in view of unity of invention, which is discussed in MPEP 1800, and specifically 1850. As such, the arguments directed toward 806.05(h) and 803 are not persuasive to overcome the restriction requirement.
Regarding the technical feature of formula (I), it is respectfully pointed out that formula (I) is not a generic compound that shares a common structure core amongst groups I-III. As recited in claim 1, one genus of formula (I) comprises a core generic compound wherein R1 is H; R2 is a C6-C14 aryl substituted with (CH2)2NHCORa, wherein Ra is a 5-6 member lactam ring substituted with one or more C1-C6 alkyl groups; and R3 is a substituted C3-C7 cycloalkyl substituted with C(O)XRb and (CH2)mORc, wherein the second genus of formula (I) comprises a core generic compound wherein R1 is a C1-C6 alkyl, a C3-C6 cycloalkyl, or a C1-C2 alkyl substituted with a C2-C6 alkenyl; R2 is a substituted C6-C14 aryl or a substituted 5-14 membered heteroaryl; and R3 is a substituted or unsubstituted C1-C6 alkyl, a C3-C7 cycloalkyl, a 4-8 membered N-heterocyclyl, a C3-C6 cycloalkyl-fused pyrrolidinyl or
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.
As such, the instant claims do not share the same or corresponding technical feature in view of the distinct definitions of R1.
These arguments have been fully considered, but are not found persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6, 9 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/16/2026.
Claims 1-5 and 7-8 are examined on the merits herein.
Claim Objections
Claims 3-5 are objected to because of the following informalities:
-In claim 3, the “and/or” term in line 4, should be replaced with - -or- -, since R13 is either C(O)XRb or (CH2)mORc.
-In claim 4, in structure “(IB3),” in the isoquinolinedione ring, a methyl group overlaps with a carbonyl group. This is structurally improper and should be replaced with a compound wherein the two groups do not overlap.
-In claim 5, many of the compounds are blurry and illegible. These blurry and illegible compounds should be replaced with clear structural depictions of the compounds.
-The Markush language in claim 5 is improper. Commas should be inserted between compounds, and the term “and” should be inserted prior to the depiction of the final Markush member. See MPEP 2173.05(h) for guidance on proper Markush language.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 3-4 are 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 3, in the definition of Rc and Ri, lines 2, the term “preferably” renders the claim indefinite, because it is unclear whether the limitation(s) following the phrase are part of the claimed invention or merely exemplary of the claimed invention. See MPEP § 2173.05(d).
In view of compact prosecution, for the purpose of applying prior art, the limitations following this phrase, in reference to Rd and Re, are interpreted as exemplary and as not further limiting the claims.
-In claim 4, prior to compound “(IB6),” the phrase “the preferred heteroaryl is isoxazolyl” renders the claim indefinite. First, this claim lacks antecedent basis. It is not clear what “the preferred heteroaryl” is referencing. Second, it is not clear if the term “preferred” is part of the claimed invention or is merely exemplary of the claimed invention.
In view of compact prosecution, for the purpose of applying prior art, the limitations following this phrase, in reference to “(IB6),” are interpreted as exemplary and as not further limiting the claims.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
-In claim 4, formula “(IB5)” is outside of the scope of the compound of “(IB)” in claim 2, from which claim 4 depends. In claim 2, R23 is defined as an alkyl, cycloalkyl. N-heterocyclyl, cyclopentyl-fused pyrrolidinyl,
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, or a substituted cyclohexyl. None of these definitions include R23 forming a ring with the nitrogen atom to which it is attached.
-In claim 5, compound I-33 is outside of the scope of the compound of formula (I) in claim 1, from which claim 5 depends. In claim 1, R3 is defined as an alkyl, cycloalkyl. N-heterocyclyl, cyclopentyl-fused pyrrolidinyl, or
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. None of these definitions include R3 forming a ring with the nitrogen atom to which it is attached.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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 1-3 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muller (Novel glimepiride derivatives with potential as double-edged swords against type II diabetes. Published 2010, PTO-892).
Regarding claims 1-3, and 8, Muller teaches Glim 6 and Glim8:
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and
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(pg. 6), wherein Glim 8 meets the limitations of instant formula (I), when:
R1 is H, R2 is a C6 aryl substituted with (CH2)2NHC(O)Ra, wherein Ra is 5-membered lactam ring substituted with two C1 alkyl groups; R3 is a C6 cycloalkyl substituted with–(CH2)mORc, wherein m is 0, and Rc is a C1 alkyl.
Regarding claim 2, Glim 8 is a compound of instant formula (IA).
Regarding claim 3, Rc is a C1 alkyl.
Regarding claim 8, when reading the preamble in the context of the entire claim, the recitation “soluble epoxide hydrolase inhibitor” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02. Moreover, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01.
"A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." See MPEP 2131.02.
Claims 1, 2 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Braselton (Gas Chromatographic and Mass Spectral Properties of Sulfonylurea/V-Methyl-A/'-perfluoroacyl Derivatives, published 1976, IDS).
Braselton teaches:
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, which meets the limitations of formula I, when:
R1 is a C1 alkyl,
R2 is a C6 aryl substituted with a C1 alkyl, and
R3 is a C4 alkyl.
Regarding claim 2,
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is a compound of instant (IB).
"A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." See MPEP 2131.02.
Regarding claim 8, when reading the preamble in the context of the entire claim, the recitation “soluble epoxide hydrolase inhibitor” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02. Moreover, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01.
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 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.
Claims 1-5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Muller (Novel glimepiride derivatives with potential as double-edged swords against type II diabetes. Published 2010, PTO-892) in view of Patani (Bioisosterism: A Rational Approach in Drug Design, published 1996, PTO-892) and Braselton (Gas Chromatographic and Mass Spectral Properties of Sulfonylurea/V-Methyl-A/'-perfluoroacyl Derivatives, published 1976, IDS).
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Muller is applied to claims 1-3, and 8, as discussed above and incorporated herein. Muller additionally teaches
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, glimepiride (pg. 5, Figure 1).
While Muller teaches
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, it differs from that of instant claim 4-5 in that it does not teach instant R1 as CH3 to arrive at instant IB1 in claim 4 and instant I-1 in claim 5.
Patani teaches bioisosterism as a tool for the medicinal chemist for the rational modification of lead compounds into safer and more clinically effective agents (pg. 3147, “Introduction”). The ability of a group of bioisosteres to elicit similar biological activity is attributed to common physicochemical properties. Bioisosteres provide opportunities for the medicinal chemist to gain more specific insight into the quantitative structure-activity relationships associated with a specific class of drugs. Bioisosteric replacements often provide the foundation for the development of QSAR in drug design (pg. 3148, Col. 1).
Patani teaches CH3 and H as bioisosteres (pg. 3152, “4.”; pg. 3153, Cols. 1-2, and particularly Figure 14, Table 12).
In conclusion, Patani teaches that bioisosteres modulate biological activity by virtue of subtle differences in their physicochemical properties. Systematic correlation of physicochemical parameters with observed biological activity is very effective in highlighting subtle differences within bioisosteric groups which often increases activity. This systematic approach facilitates the use of bioisosteric replacements in structure-activity studies.
Braselton is applied as discussed above and incorporated herein.
Braselton additionally teaches methyl derivatives of sulfonylurea compounds. Braselton teaches that these derivatives are thermally stable and exhibit excellent gas chromatographic properties.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to substitute the H of NH with a CH3, in
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, to arrive at
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. One of ordinary skill in the art would have been motivated to make such an addition and substitution, with a reasonable expectation of success, because
-Patani teaches H and CH3 as bioisosteres, and
-Braselton teaches that such methyl derivatives of sulfonylureas are known in the art,
-Braselton teaches these methyl derivatives as thermally stable and as exhibiting excellent gas chromatographic properties.
As such, an ordinary skilled artisan would have been motivated to make such a substitution, to predictably arrive at the structurally and functionally similar compound,
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, which is possibly safer and more clinically effective to treat diabetes by lowering blood sugar (abstract of Muller).
Further regarding claim 5, compounds which are position isomers are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties, MPEP 2144.09.
Claims 1-3 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Muller (Novel glimepiride derivatives with potential as double-edged swords against type II diabetes. Published 2010, PTO-892) in view of US PG Pub 2010/0034885 to Tarruella Delsams (published 2010, PTO-892).
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Muller is applied to claims 1-3, and 8, as discussed above and incorporated herein.
Muller additionally teaches its compounds as glimepiride derivatives (pg. 6, Fig. 2) for use in treating diabetes (abstract).
Tarruella Delsams teaches compositions comprising glimepiride for the treatment of diabetes (abstract; pg. 8, claim 1).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to select the glimepiride derivatives,
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, of Muller for formulation in a pharmaceutical composition, to arrive at instant claim 7. One of ordinary skill in the art would have been motivated to make such a selection, with a reasonable expectation of success, because:
-Muller teaches derivatives of glimepiride for the treatment of diabetes, and
-Tarruella Delsams teaches administering pharmaceutical compositions comprising glimepiride to treat diabetes.
As such, an ordinary skilled artisan would have been motivated to make such a selection, to predictably arrive at a glimepiride derivative composition that is effective for administration to treat diabetes.
Prior Art Made of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 4,379,785 to Weyer (published 1983, PTO-892) teaches
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(Col. 9, lines 61-65,) and
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(Col. 10, lines 3-6), which meets the limitations of instant Formula (I) when R2 is a C6 aryl; Ra is a 6 membered lactam ring substituted by a C1alkyl; R3 is a C6cycloalkyl substituted by a C1alkyl.
Weyer teaches
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(Col. 10, lines 1-3,), which meets the limitations of instant Formula (I) when R2 is a C6 aryl; Ra is a 6 membered lactam ring substituted by a C1alkyl; R3 is a C6cycloalkyl substituted by a C2 alkyl.
Weyer teaches
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(Cols. 5-6, example 1, lines 18-21 of Col. 6), which meets the limitations of instant Formula (I) when R2 is a C6 aryl; Ra is a 5 membered lactam ring; R3 is a C6cycloalkyl.
Weyer teaches
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(Col. 6, example 2,), which meets the limitations of instant Formula (I) when R2 is a C6 aryl; Ra is a 6 membered lactam ring; R3 is a C6cycloalkyl.
Weyer teaches
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(Col. 7, example 3, lines 5-7), which meets the limitations of instant Formula (I) when R2 is a C6 aryl; Ra is a 6 membered lactam ring; R3 is a C6 cycloalkyl substituted by two alkyl groups.
Weyer teaches
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( Col. 7, example 3, lines 32-34), which meets the limitations of instant Formula (I) when R2 is a C6 aryl; Ra is a 6 membered lactam ring; R3 is a C5 cycloalkyl substituted by an alkyl groups.
Weyer teaches pharmaceutical compositions comprising these compounds, in combination with pharmaceutically acceptable carriers.
While Weyer teaches
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, for example, it differs from that of instant formula I in that it does not teach the R3 cycloalkyl as substituted by -C(O)XRb or -(CH2)mORc.
Girgis (An Infrared Study of Tautomerism in Acetohexamide Polymorphs, published 1989, PTO-892) teaches:
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, which is instant compound I-5 (pg. 229).
However, it does not teach the instant R1 position as an alkyl, cycloalkyl, or alkyl substituted by alkenyl, as recited in instant claim 1.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN WELLS whose telephone number is (571)272-7316. The examiner can normally be reached M-F 7:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James (Jim) Alstrum-Acevedo can be reached on 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN WELLS/Examiner, Art Unit 1622
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