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 .
Status of the Claims and Response to Restriction Requirement
Claims 1-2, 4, 9, 11, 13-16, 18-20, 25-27, 30, 32-34 and 36 are pending as of the response filed 07/06/2026. Claims 3, 5-8, 10, 12, 17, 21-24, 28-29, 31 and 35 are cancelled.
Applicant’s election of group I claims 1-2, 4, 9, 11, 13-16, 18-20, 25-27 and 33 with traverse, is acknowledged. Applicant’s remarks regarding the restriction requirement was carefully considered and was found to be partially persuasive. Accordingly, group I and II claims are joined together (1-2, 4, 9, 11, 13-16, 18-20, 25-27, 30, 32-33 and 36) and examined herein as a group. However, in view of the Alasibi reference discussed below, the group III claims are maintained as belonging to a distinct invention. Claim 34 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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’s election of a species of a compound of formula (I) shown below with traverse, is acknowledged.
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Claims 1-2, 4, 9, 11, 13-16, 18-20, 25-27, 30, 32 and 36 encompass the elected species. Claim 33 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Claims 1-2, 4, 9, 11, 13-16, 18-20, 25-27, 30, 32 and 36 are examined to the extent to which they are readable on the above identified elected invention and elected species.
In view of the pending claims, the following prior art that anticipates the elected species and the process claims was found, as discussed below.
Priority
This application is a 371 of PCT/IB2022/058732 filed 09/15/2022, PCT/IB2022/058732 has PRO 63/244,562 filed 09/15/2021.
. The subject matter of the instant claims are supported by the provisional application, 63/244,562. Accordingly, the effective filing date of instant claims 1-2, 4, 9, 11, 13-16, 18-20, 25-27, 30, 32 and 36 is 09/15/2021.
Information Disclosure Statement
The information disclosure statements submitted 04/01/2024 and 03/14/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Interpretation
The recitation of the limitation “and/or” within the claims is interpreted to mean that either one of the options needs to be taught in the prior art, for the limitation to be anticipated. However, if the prior art teaches more than one option recited in the claim, they have been cited to.
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 25 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.
Regarding claim 25, the claim recites “… and X is a halogen or -OSO2PhR”. However, there is no recitation of variable X in the claim, introducing ambiguity regarding the scope of the claim. Therefore, the metes and bounds of the claim are indefinite.
For the purpose of applying prior art, claim 25 has been interpreted without the limitation “and X is a halogen or -OSO2PhR” appearing in the claim.
Claim Rejections - 35 USC § 112
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 2 and 18 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.
Regarding claim 2, the claim depends from claim 1 and recites in subsection e) that “the compound having formula (I) is in salt form”. However, claim 1 does not support salts of formula (I). This broadens the scope of claim 2, which is improper.
Regarding claim 18, the claim depends from claim 1 and recites “wherein the compound having formula (I) is in salt form”. However, claim 1 does not support salts of formula (I). This broadens the scope of claim 18, which is improper.
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)(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, 2, 4, 9, 11, 20, 25-27, 30-32 and 36 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Alasibi et al. (WO 2021/181274 A1, filing date 09 March 2021, hereinafter Alasibi, in the IDS).
The Alasibi reference is commonly owned and has a common inventor with the instant application. Based upon the earlier effectively filed date (09 March 2021) of the reference that precedes the effective filing date of the instant application (15 September 2021), it constitutes prior art under each of 35 U.S.C. 102(a)(2).
Regarding instant claims 1 and 26, Alasibi teaches a process for preparing the compound 5-fluoro-4-imino-3-methyl-1-(phenyl-4-sulfonyl)-3,4-dihydro-1H- pyrimidin-2-one having the formula (I), by reacting compound having the formula (II) with dimethylsulphate (DMS); wherein R is hydrogen, alkyl, alkenyl, alkynyl, alkoxy, haloalkyl, haloalkoxy, alkylthio, haloalkylthio, amino, alkylamino, dialkylamino, alkoxycarbonyl, alkyl carbonyl, hydroxyalkyl, ester, acid halogen, -SH, -OH, -NH2, -NO2, -CN or CF3 (Pg. 3, Ln. 1 – Pg. 4, Ln. 4).
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Alasibi teaches isolating a method for isolating compound having the formula (I) comprising (1) washing of an organic solution comprising a polar water immiscible solvent and a mixture of compound (I) and DMS with 2-15% w/w of aqueous basic solution, (2) separating the organic phase from the water phase, and (3) concentrating the organic phase and filtering the precipitated solid (Pg. 9, Lns. 9-15; Pg. 43, Ln. 25 – Pg. 44, Ln. 2). Therefore, Alasibi anticipates the limitations of step (1) drawn to preparing a compound of formula (I) by reacting a compound of formula (II) with DMS in the presence of a water immiscible solvent and step (2) isolating the compound of formula (I) washing with an aqueous basic solution, as in instant claim 1.
Regarding instant claim 26, the examiner notes that it is a product-by-process type claim.
According to MPEP 2113, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, Alasibi anticipates the compound of formula (I) as instantly claimed. The method of production has no bearing with respect to patentability (although in this case, Alasibi also discloses identical method of preparation).
Regarding instant claim 2, Alasibi anticipates the process of instant claim 1. Alasibi teaches the R variable of formula (I) includes alkyl, alkenyl, alkynyl, alkoxy, haloalkyl, haloalkoxy, alkylthio, haloalkylthio, amino, alkylamino, dialkylamino, alkoxycarbonyl, alkyl carbonyl, hydroxyalkyl, ester, acid halogen, -SH, -OH, -NH2, -NO2, -CN or CF3 (Pg. 4, Lns. 1-4). Alasibi teaches the organic polar water immiscible solvent to include methyl tetrahydrofuran (MeTHF), cyclopentylmethylether (CPME), and a mixture thereof (Pg. 44, Lns. 18-19; Pg. 44, Lns. 22-24). Alasibi teaches the aqueous basic solution is an aqueous solution of a base selected from the group consisting of DABCO, TBAB, NaOH, K2CO3, KHCO3, Na2CO3, Et3N, NaOMe, NaOEt and any combination thereof (Pg. 45, Lns. 1-4). Alasibi teaches 2-15% w/w of aqueous basic solution based on the total weight (Pg. 40, Lns. 15-19). Therefore, Alasibi anticipates the limitations of (a) to (d) of instant claim 2.
Regarding instant claim 4, Alasibi anticipates the process of instant claim 1. Alasibi teaches an embodiment wherein the isolation of the compound having the formula (I) involves separating the organic phase from the water phase (i.e., a multi-phase system being formed), concentrating the organic phase and filtering the precipitated solid (Pg. 43, Ln. 25 – Pg. 44, Ln. 2). Alasibi teaches an embodiment wherein the isolation of the compound having the formula (I) involves obtaining a slurry mixture containing solids, filtering the precipitated solids (Pg. 45, Ln. 29 – Pg. 46, Ln. 4). Alasibi teaches wherein the organic solvent is CPME (i.e., a water immiscible solvent, thereby obtaining a multiphase system) (Pg. 47, Lns. 7-9). Therefore, Alasibi anticipates the limitations of (b), (c) of instant claim 4.
Regarding instant claim 9, Alasibi anticipates the process of instant claim 1. Alasibi teaches embodiments wherein the reaction of the compound having formula (II) with DMS is conducted at a temperature between 25-85°C (Pg. 36, Lns. 10-11). Alasibi teaches embodiments wherein the molar ratio between the compound having formula (II) and DMS is between 1:2 to 1:10 (Pg. 36, Lns. 15-23). Alasibi teaches embodiments wherein the molar ratio between the solvent or mixture of solvents to the compound having formula (II) is between 30:1 and 1:1 (Pg. 38, Ln. 16 – Pg. 39, Ln. 2). Alasibi teaches embodiments wherein the molar ratio between the solvent or mixture of solvents to DMS is between 10:1 to 1:1 (Pg. 39, Lns. 3-13). Alasibi teaches embodiments wherein the base in the aqueous basic solution is K2CO3 (Pg. 40, Lns. 20-21). Alasibi teaches embodiments wherein the reaction of the compound having formula (II) with DMS to obtain the compound having formula (I) has a yield of at least 60% (Pg. 40, Lns. 25-30). Therefore, Alasibi anticipates the limitations of (b) - (g) of instant claim 9.
Regarding instant claim 11, Alasibi anticipates the process of instant claim 1. Alasibi teaches an embodiment wherein the solvent is a mixture of DMA and CPME (CPME is a water immiscible solvent, while DMA is water miscible) (Pg. 37, Ln. 28). Therefore, Alasibi anticipates the limitation b) of instant claim 11.
Regarding instant claim 18, Alasibi anticipates the process of instant claim 1. The process of claim 1 is an N-alkylation reaction starting from the pyrimidinone compound of formula (II) with DMS as the alkylating agent. Because only one methyl group is transferred under typical conditions, the remaining portion of the dimethyl sulfate molecule becomes a negatively charged monomethyl sulfate anion (MeSO4-). The generated quaternary pyrimidinonium species will form a salt with the methylsulfate counter anion to form the monomethylsulfate salt.
Regarding instant claim 20, Alasibi anticipates the process of instant claim 1. Alasibi teaches an embodiment of a method for isolating the compound having formula (I) from a mixture comprising the compound having formula (I) and DMS, wherein the method comprises (1) mixing the mixture comprising (i) the compound having formula (I), (ii) DMS and optionally (iii) a solvent with 2-15% w/w of an aqueous basic solution to obtain slurry mixture containing solids, and (2) filtering the precipitated solids (Pg. 45, Ln. 29 – Pg. 46, Ln. 3). ). Alasibi teaches the organic polar water immiscible solvent of the reaction to include methyl tetrahydrofuran (MeTHF), cyclopentylmethylether (CPME), and a mixture thereof (Pg. 44, Lns. 18-19; Pg. 44, Lns. 22-24) (therefore allowing an additional solvent). Therefore, Alasibi anticipates the limitation a) of instant claim 20.
Regarding instant claim 25, Alasibi anticipates the process of instant claim 1. Alasibi teaches an embodiment wherein the compound having formula (I) is a compound having formula (Iai) and the compound having formula (II) is a compound having formula (IIai) (Pg. 20, Ln. 19 – Pg. 21, Ln. 6).
Regarding instant claim 27, Alasibi anticipates the process of instant claim 1. Alasibi teaches a process for preparing the compound 5-fluoro-4-imino-3-methyl-1-(phenyl-4-sulfonyl)-3,4-dihydro-1H- pyrimidin-2-one having the formula (I): comprising (a) reacting 5-fluorocytosine with compound having the formula (III): n the presence of at least one polar solvent and at least one base to obtain the compound having the formula (II) and (b) reacting compound having the formula (II) with dimethylsulphate (DMS) and isolating the compound of Formula (I) (Pg. 3, Ln.1 – Pg. 4, Ln. 5).
Regarding instant claims 30 and 32, Alasibi teaches an embodiment wherein the isolation of the compound having the formula (I) involves separating the organic phase from the water phase (i.e., a multi-phase system being formed), concentrating the organic phase and filtering the precipitated solid (Pg. 43, Ln. 25 – Pg. 44, Ln. 2). Alasibi teaches wherein the organic solvent is CPME (i.e., a water immiscible solvent, thereby obtaining a multiphase system) (Pg. 47, Lns. 7-9). Therefore, Alasibi anticipates the limitations of instant claim 30. Alasibi teaches an embodiment wherein the compound having formula (I) is a compound having formula (Iai) (Pg. 19, Ln. 23 – Pg. 20, Ln. 2).
According to MPEP § 2131.02(III), “A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962))”. In the instant case, the method of claim 32 can be clearly envisaged from the disclosure of Alasibi.
Regarding instant claim 36, Alasibi teaches isolation of the compound having formula (II) comprises (i) precipitation by adding a protic solvent to the reaction mixture, and (ii) filtration (Pg. 32, Lns. 18-20). Therefore, Alasibi anticipates the limitation a) of instant claim 36.
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.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Alasibi et al. (WO 2021/181274 A1, filing date 09 March 2021, hereinafter Alasibi, in the IDS) as applied to claims 1, 2, 4, 9, 11, 20, 25-27, 30-32 and 36 above, in view of Hamper et al. (US 5,698,708 A, date of patent 16 December 1997, hereinafter Hamper).
The teachings of Alasibi are set forth in the anticipation rejection above and incorporated herein by reference.
Regarding instant claim 15, Alasibi anticipates the process of instant claim 11. Alasibi do not teach wherein the mixture of solvents is a mixture of DMA and toluene.
Hamper teaches a process for the preparation of substituted pyrazoles (Abstract). Hamper teaches reactions that involve an alkylation step (Col. 7, Lns. 40-44). Hamper teaches toluene as the most preferred solvent for the alkylation reaction (Col. 19, Lns. 36-40) and the alkylating agent being dimethylsulfate (Col. 19, Lns. 41-46). Hamper teaches the methods confer significant advantages in terms of cost, reliability, selectivity, yield and throughput (Col. 7, Lns. 50-54).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, in view of the teachings of Alasibi and Hamper, to have substituted the CPME of Alasibi with toluene as taught by Hamper to arrive at the process of the instant claims with a reasonable expectation of success. The motivation being to confer significant advantages in terms of cost, reliability, selectivity, yield and throughput (Hamper, Col. 7, Lns. 50-54).
According to MPEP 2144.06 (II), “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982)”. In the instant case, both the CPME and toluene are water immiscible solvents, considered equivalents in the art.
Regarding instant claim 16, Alasibi in view of Hamper renders obvious the process of instant claim 15. Alabisi teaches the weight ratio between DMA and CPME is between 1:1 to 1:10.
According to MPEP 2144.05(II)(A), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the absence of any criticality of the claimed ratios, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the instantly claimed ratios of solvents and reagents.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Alasibi et al. (WO 2021/181274 A1, filing date 09 March 2021, hereinafter Alasibi, in the IDS) as applied to claims 1, 2, 4, 9, 11, 20, 25-27, 30-32 and 36 above, in view of Still et al. (US 5,599,926 A, date of patent 04 February 1997, hereinafter Still).
The teachings of Alasibi are set forth in the anticipation rejection above and incorporated herein by reference.
Regarding instant claim 13, Alasibi anticipates the process of instant claim 11. Alasibi do not teach wherein the mixture of solvents is a mixture of DMA and anisole.
Still teaches method of preparation of receptor molecules (Abstract). Still teaches some reactions that involve alkylations (Col. 34, Lns. 14-16). Still teaches scavengers such as anisole help prevent untoward alkylation reactions (Col. 16, Lns. 21-22).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, in view of the teachings of Alasibi and Still, to have substituted the CPME of Alasibi with anisole as taught by Still to arrive at the process of the instant claims with a reasonable expectation of success. The motivation being to prevent the over-alkylation (Still, Col. 16, Lns. 21-22).
According to MPEP 2144.06 (II), “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982)”. In the instant case, both the CPME and anisole are water immiscible solvents, considered equivalents in the art.
Regarding instant claim 14, Alasibi in view of Hamper renders obvious the process of instant claim 13. Alabisi teaches the weight ratio between DMA and CPME is between 1:1 to 1:10.
According to MPEP 2144.05(II)(A), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the absence of any criticality of the claimed ratios, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the instantly claimed ratios of solvents and reagents.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Alasibi et al. (WO 2021/181274 A1, filing date 09 March 2021, hereinafter Alasibi, in the IDS) as applied to claims 1, 2, 4, 9, 11, 20, 25-27, 30-32 and 36 above, in view of Variankaval et al. (From Form to Function: Crystallization of Active Pharmaceutical Ingredients, July 2008, hereinafter Variankaval).
Regarding instant claim 19, Alasibi anticipates the process of instant claim 1. Alabisi anticipates the steps of subsection (a) with respect to (1) preparing the compound having formula (I) by reacting the compound having the formula (II) with dimethylsulphate (DMS) in the presence of at least one water immiscible solvent, and (2) isolating the compound having formula (I) from the reaction mixture by (i) washing the reaction mixture with an aqueous basic solution to from an organic phase and a water phase, (ii) separating the organic phase from the water phase (as discussed in the anticipation rejection above).
Alasibi do not teach crystalizing the compound having the formula (I) from the organic phase and filtering the crystals.
Variankaval teaches crystallization represents a convenient and scalable
method to purify a drug substance (Pg. 1683, second column, second full paragraph). Variankaval further teaches crystallinity confers various advantages during isolation, processing and storage of the drug, such as better impurity rejection, improved handling characteristics, such as sticking and flow and, in the majority of cases, better physical and chemical stability (Pg. 1682, second column, last paragraph).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, in view of the teachings of Alasibi and Variankaval, to have crystallized the compound having the formula (I), with a reasonable expectation of success in conferring better properties. The motivation being to provide a compound with better physical and chemical stability (Variankaval, Pg. 1687, continued paragraph).
Applicants may overcome this rejection under 35 U.S.C. 102(a)(2) by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See MPEP 717.02.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 4, 9, 11, 25 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6 and 9-13 of U.S. Patent No. 12,655,109 B2.
The instant claims and the claims of the reference ‘109 patent are drawn to a process for obtaining 5-fluoro-4-imino-3-methyl-1-(phenyl-4-sulfonyl)-3,4-dihydro-1H-pyrimidin-2-one having formula (I).
The instant claims are drawn to a process for obtaining 5-fluoro-4-imino-3-methyl-1-(phenyl-4-sulfonyl)-3,4-dihydro-1H-pyrimidin-2-one having formula (I), with R as defined in instant claim 1, comprising: preparing the compound having formula (I) by reacting a compound having formula (II) with dimethyl sulfate (DMS).
The claims of the reference ‘109 patent are drawn to a process for preparing the compound 5-fluoro-4-imino-3-methyl-1-(phenyl-4-sulfonyl)-3,4-dihydro-1H-pyrimidin-2-one having formula (I), with R as defined in claim 1 of the reference ‘109 patent, comprising: by reacting a compound having formula (II) with dimethyl sulfate (DMS).
Claims 1-2, 6 and 9-13 of the reference ‘109 patent anticipates the process of the instant claims for obtaining 5-fluoro-4-imino-3-methyl-1-(phenyl-4-sulfonyl)-3,4-dihydro-1H-pyrimidin-2-one having formula (I). Specifically, claims 1-2, 11-13 of the reference ‘109 patent anticipates the step of reacting a compound having formula (II) with dimethyl sulfate (DMS) to obtain a compound of formula (I) with the R variable being identical in scope as in instant claims 1-2 and 25. Claim 6 of the reference ‘109 patent anticipates the reaction conditions of instant claim 9 with respect to the reaction temperature; the molar ratio between the compound of formula (II) and DMS; reaction yield. Claim 9 of the reference ‘109 patent anticipates the reaction conditions of instant claims 1-2, 9, 11 with respect to the solvent comprising at least one water immiscible solvent (say, CPME, MeTHF, DCM); the molar ratio between the solvent and the compound of formula (II); the molar ratio between the solvent(s) and DMS. Claim 10 of the reference ‘109 patent anticipates the isolation method of instant claims 1-2, comprising washing the organic solution obtained after reacting a compound of formula (II) with DMS with 1-15% w/w of an aqueous basic solution; separating the organic phase from the water phase (i.e., a multiphase system); concentrating the organic phase and filtering the precipitated solid.
The instant claims 1-2, 4, 9, 11, 25 and 27 and claims 1-2, 6 and 9-13 of U.S. Patent No. 12,655,109 B2 are therefore not patentably distinct.
This is a nonstatutory double patenting rejection.
Claims 1-2, 4, 25 and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of co-pending Application No 19/675,427.
The instant claims and the claims of the reference ‘427 application are drawn to a process for isolating 5-fluoro-4-imino-3-methyl-1-(phenyl-4-sulfonyl)-3,4-dihydro-1H-pyrimidin-2-one having formula (I).
The instant claims are drawn to a process for obtaining 5-fluoro-4-imino-3-methyl-1-(phenyl-4-sulfonyl)-3,4-dihydro-1H-pyrimidin-2-one having formula (I), with R as defined in instant claim 1, comprising: preparing the compound having formula (I) by reacting a compound having formula (II) with dimethyl sulfate (DMS).
The claims of the reference ‘427 application are drawn to a process for preparing 5-fluoro-4-imino-1-(phenyl-4-sulfonyl)-3,4-dihydro-1H-pyrimidin-2-one having formula (II), comprising reacting 5-fluorocytosine with compound having the formula (III), with R and X variables as defined.
Claims 1-2 of the reference ‘427 application anticipates the process of instant claim 27 (wherein the R and X variables are identical in scope to the instant claims) and the species of claim 25. Claim 3 of the reference ‘427 application anticipates isolation of a having formula (I) by an identical process to that of instant claims 1-2 and 4. While the claims of the reference ‘427 application does not disclose the structure of the compound having formula (I), the specification of the reference application (Pgs. 6-7 of the specification) teaches the compound of formula (I) to be identical to the instant compound of formula (I) obtained by reaction of a compound having formula (II) with DMS.
The instant claims 1-2, 4, 25 and 27 and claims 1-3 of co-pending Application No 19/675,427 are therefore not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-2, 4, 9, 11, 13-16, 18-20, 25-27, 30, 32 and 36 are rejected.
No claims are allowed.
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/PADMAJA S RAO/Examiner, Art Unit 1627
