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 .
Priority
The instant application is a 35 USC 371 National Stage filing of international application No. PCT/US2022/040835, filed August 19, 2022, which claims the benefit of an effective US filing date under 35 USC 119(e) from US Provisional Applications 63/313,560 and 63/235,706, filed February 24, 2022 and August 21, 2021, respectively.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 16, 2024 was in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the IDS documents were considered and a signed copy of the 1449 form is attached.
Status of Claims
Currently, claims 1-19 and 23 are pending in the instant application and under consideration herein.
Claim Objections
Claim 11 is objected to for a typographical error. The text “CyC” should be replaced with “CyC” for consistency with claim 1.
Claim 16 is objected to for depending on a rejected base claim, but appears allowable if rewritten in independent form.
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 18 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 pre-AIA the applicant regards as the invention.
The claim is indefinite because the claim contains reference to Table 1, which is a reference to the specification. Claims must stand alone to define the invention and incorporation into claims by express references to the specification is not permitted except in “exceptional circumstances where there is no practical way to define the invention.” Ex parte Fressola, 27 USPQ 2d 1608. In the present instance, since each compound can be practically defined in the claims, no reference to the specification should be made.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-15, 17, 19 and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2020/092196.
The ‘192 publication teaches compounds of the formula
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174
161
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for the modulation of IL-12, IL-23 or IFNα (Abstract, p. 6-7). Many of the exemplified compounds anticipate instant formula I’. As one example, compound 245 (p. 138) has the structure
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148
190
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, which reads on formula I’ where: CyA is
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73
73
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(A3 is CH; A6 is N; A5 is C(RA5) where RA5 is RA where RA is-C(O)NR2 where each R is H or RA5 is RB where RB is a C1-aliphatic chain substituted by two instances of RC where one RC is oxo and the other is NR2 where each R is H; RA2 is -NHRA2A where RA2A is RA and RA is -C(O)R and R is aliphatic (cyclopropyl), or RA2A is RB where RB is an aliphatic chain substituted by RC where RC is oxo or cyclopropyl; L1 is -NH-; CyB is
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84
67
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where each of B4-B6 are CH, B2 is C(RB2) where RB2 is OR and R is methyl; and CyC is thiazolyl substituted by RC1 where RC1 is
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70
86
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, L2 is CH2, and RD2 is RD2A where RD1 and RD2A are taken together with their intervening atoms to form a morpholine ring. Other anticipatory examples include compounds 11, 54, 136 and 246. Note that since IC50 values are reported in units of molarity, compositions of the anticipatory compounds were necessarily prepared (Table 14, beginning at p. 264). Finally, regarding claim 23, the instant application discloses that JAK2-mediated disorders include conditions such as MS, systemic lupus erythematosus, psoriatic arthritis and others, which are taught by the prior art as being treatable by administration of the anticipatory compounds (see ‘196 publication, claim 16, for example). Since the prior art teaches all required features of the instant claims, the claims are anticipated.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alicia L. Otton whose telephone number is 571-270-7683. The examiner can normally be reached on Monday – Thursday 8:00 – 6:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Fereydoun Sajjadi can be reached on 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA L OTTON/Primary Examiner, Art Unit 1699
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