Detailed Action
The present office action is in response to the amendments filed 13 May 2026.
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
Claims 13-15 and 18 of the pending application have been examined on the merits. Claims 1-12, 16-17, and 19 are withdrawn (see “Response to Applicant Election” below). Acknowledgement is made of the cancellation of claims 20-21.
Priority
Applicants identify the instant application, Serial #: 18/706,531, filed 01 May 2024, as a National Stage Entry of International Application #: PCT/CN2022/131954, filed 15 Nov 2022, which claims foreign priority from Foreign Application #: CN202111350842.6, filed 15 Nov 2021.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 01 May 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Applicant Election
Applicant’s election without traverse of Compound 59 as the species of formula (1) or formula (2) in the reply filed on 13 May 2026 is acknowledged. A search for this species returned prior art.
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Claim 1-12, 16-17, and 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 13 May 2026.
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 15 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 15, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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) 13-15 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fraser et al. (J Med Chem, 2016, 59:4697-4710), hereinafter Fraser, further in view of Liu et al. (Bioorg Med Chem Lett, 2015, 25:3436-3441), hereinafter Liu.
The instant claims are directed to compounds of formula (1) and formula (2):
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Applicant elected Compound 59 in the reply filed 13 May 2026:
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Compound 59 is a species of formula (2) when R13 is C3 cycloalkyl substituted by C1 alkyl; and R14 and R15 are C1 alkyl. Instant claims 13-15 and 18 read on the elected species.
Fraser teaches compound 11a which is an SRC inhibitor (pg. 4701, Fig. 4a and 4c):
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Compound 11a was chosen for further screening as it outperformed the gold-standard SRC inhibitor dasatinib (pg. 4701, column 2). Fraser further teaches synthesizing compounds 12a-x to discover which aspects of the compound are responsible for the high antiproliferative properties and unique selectivity profile of Compound 11a (pg. 4703, column 1). The carbamate head group of Compound 11a was identified as primary spot to screen various isosteres for activity (pg. 4703, column 2). However, Compound 11a differs from the instantly elected compound in having a tert-butyl group as a substituent of the carbamate instead of a cyclopropylmethyl group.
Liu teaches the optimization of a FLT3 inhibitor by modifying various substituents including a tert-butyl group (Abstract). Liu teaches that the tert-butyl group has potential to be oxidized in vivo and so screened various fluorinated variations of the tert-butyl group and further tested hydroxylated tert-butyl and cyclopropylmethyl in place of tert-butyl (pg. 3437, column 2 to pg. 3438, column 1).
MPEP § 2144.09(I) states, “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. ‘An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.’ In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).”
MPEP § 2144.09(III) further states that “structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979)” and that known bioisosteric replacements result in structures which have similar utility.
Based on the teachings of Fraser and Liu a person of ordinary skill in the art would modify the structure of Compound 11a, taught by Fraser, at the carbamate head group to further test for the most bioactivity against the SRC protein. The artisan would choose to modify the tert-butyl group for the possibility of it oxidizing in vivo, taught by Liu, and use the suggested isosteres taught by Liu to modify the tert-butyl substituent, which includes the cyclopropylmethyl group, and so arrive at the instantly elected compound. The motivation to make the instantly elected compound derives from the expectation that structurally similar compounds would possess similar activity (i.e., they would be pharmacologically active SRC inhibitors) with potential for better bioavailability and lower side effects. There would be a reasonable expectation of success in producing and using the instantly claimed compound in view of the compounds taught by Fraser.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the foregoing discussion, the examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103. From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Conclusion
No claim is allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan D. Mahlum whose telephone number is (703)756-4691. The examiner can normally be reached 8:30 AM - 5:00 PM ET, M-F.
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/J.D.M./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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