DETIALED 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 .
Status of Claims
Claims 16-35 are pending in the instant application. Claims 1-15 are cancelled and claims 16-35 are new via the amendment filed October 8th, 2024.
Priority
This is a 35 U.S.C. 371 National Stage filing of International Application No. PCT/IB2022/059202 filed September 27th, 2022, which claims priority under 35 U.S.C. 119(a-d) to EP21199449.6, filed September 28th, 2021. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d).
Information Disclosure Statement (IDS)
The Information Disclosure Statement (IDS) filed 07/11/2024 was considered by the Examiner.
Claim Objections
Claim 24 is objected to because of the following informalities:
There appears to be a typographical error in line 7 of the claim. It is recommended that applicant amend the claim to insert “if” before “both R10 and R11”.
Claim 32 is objected to because of not being in proper Markush format. In line 1, after “is” the phrase--selected from the group consisting of-- should be inserted and between the last two depicted compounds the word –and—should be inserted and “or” should be removed. These changes would obviate the objection.
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 (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 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) 16-17, 19-21, 24-25, 31 and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hiroshi et al (JPH02235874A, published September 18th, 1990).
Hiroshi teaches the following compound (Table 4, compound 26):
PNG
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204
528
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Greyscale
.
Regarding claim 16, this compound is embraced by instant formula (Ib), wherein R1, R2 and R3 are hydrogen, L is absent, A is a monocyclic ring, n is 1 and Y is a nitrogen containing chain.
Regarding claim 17, as seen above, A is a monocyclic ring, wherein A comprises 0 oxygen atoms.
Regarding claim 19, A is of formula (II), wherein Q is (IId), wherein R4 is hydrogen, R5-R9 are hydrogen, z1 is 1 and z2 is 0.
Regarding claim 20, R4 is hydrogen.
Regarding claim 21, R5 is hydrogen.
Regarding claim 24, as seen above L is absent, v is 0.
Regarding claim 25, R5 is R5a, wherein a is 0 and Subst. is hydrogen.
Regarding claim 31, R1, R2 and R3 are hydrogen.
Regarding claim 33, as the compound is a compound of instant formula (Ib), the compound is inherently a GBA inducer. The prior art is silent regarding "increases GBA enzyme levels and/or GBA enzyme activity". However: "increases GBA enzyme levels and/or GBA enzyme activity" will inevitably flow from the teachings of the prior art (see above rejection), since the same compound (a compound of instant formula (Ib)) is taught in the prior art. In other words, products of identical or similar composition cannot exert mutually exclusive properties.
In other words, even though the prior art is silent regarding "increases GBA enzyme levels and/or GBA enzyme activity", by the prior art teaching a compound of instant formula (Ib)", one will also have a compound that "increases GBA enzyme levels and/or GBA enzyme activity" even though the prior art was not aware of it.
Apparently, Applicant has discovered a new property or advantage ("increases GBA enzyme levels and/or GBA enzyme activity") of the compound taught by the prior art (a compound of instant formula (Ib)).
MPEP 2112 I states: “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”
Allowable Subject Matter
Claims 18, 22-23, 26-30 and 34-35 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
No claim is allowed.
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/A.G.K./Examiner, Art Unit 1626
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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