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 .
CONTINUING DATA
This application is a 371 of PCT/CN2022/131334 11/11/2022
FOREIGN APPLICATIONS
PCTCN2021130348 11/12/2021
Claims 1-10, 14-15, 17, 20-22, 24-33 are pending.
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.
Claims 5, 8, 14, 20, and 25-27 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 5 recites the broad list for Raa, and the claim also recites “preferably C1-6 alkyl,” which is the narrower statement of the range/limitation.
In the present instance, claim 8 recites a broad list of variables for Raa, followed by the narrower limitation “preferably methyl,” etc.
In the present instance, claim 20 recites several broad limitations followed by narrower limitations. For example, “alphavirus, e.g., Easter equine encephalitis virus.” Each instance of the broad disease followed by “e.g.” a narrower limitation is indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 25 recites the broad limitation “water or a mixture of water and organic solvent(s),” followed by the narrower limitation “preferably the reaction solvent is selected from,” etc, followed by the narrower limitation “more preferably water,” etc.
Claim 26 recites the broad limitation “inorganic or organic base (or catalyst),” followed by “for example, alkali metal hydroxide,” etc.
Claim 26 recites the broad limitation “organic tertiary amines,” followed by the narrower limitation “such as tri-C1-4alkylamines, e.g. TEA,” etc.
Claim 27 recites the broad limitation “inorganic or organic base (or catalyst),” followed by “for example, alkali metal hydroxide,” etc.
Claim 27 recites the broad limitation “organic tertiary amines,” followed by the narrower limitation “such as tri-C1-4alkylamines, e.g. TEA,” etc.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 14 recites compound EX-169, which contains variables R1, R’, and R’’. These variables are not defined, so it is impossible to determine the metes and bounds of the claim.
Claims 26 and 27 each end with “etc.,” which is indefinite because the claim is open-ended.
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.
Claim 4 is 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. Claim 4 depends from claim 1 and recites that Ra is methyl substituted with Ra1, Ra2, and Ra3. In claim 1, Ra can be a C1 alkyl which is optionally substituted with halogen, acyl, etc. In claim 4, Ra1, Ra2, and Ra3 have definitions which are not included in the substituents recited in claim 1. For example, C1-6alkyl-O- (CH2)n-, C1-7alkyl-O-aryl, C1-7alkyl-O-heteroaryl, C1-6alkyl-O-C1-6alkyl-O-(CH2)n-, C1-6haloalkyl- O-(CH2)n-, C3-6cycloalkyl-O-(CH2)n- and 3-6 membered heterocycloalkyl-O-(CH2)n- are not included in the list of optional substituents in claim 1. Claim 4 does not require all the limitations of claim 1. 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 (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) 1-4 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paymode (Org. Process Res. Dev. 2021, 25, 1822-1830, published July 27, 2021, cited on IDS).
Paymode teaches the following compound on page 1827:
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. This is a compound of Formula (I) wherein Ra is C3 alkyl. This is a compound of claim 3 wherein Ra is the fourth moiety listed. This is a compound of claim 4 wherein Ra1, Ra2, and Ra3 are C3 alkyl, H, and H. This is a compound of claim 14 EX-3.
Claim(s) 1-4, 14-15, and 32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ivanov (Collect. Czech. Chem. Commun. 2006, Vol. 71, No. 7, pp. 1099-1106, cited on IDS).
Ivanov teaches the following compounds on page 1100:
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These are compounds of Formula (I) where Ra is C6 aryl, C4 alkyl, C10 cycloalkyl, or C1 alkyl substituted by three C6 aryl groups. Compound 2b anticipates claim 3, 7th moiety listed. Compound 2b anticipates claim 4 where each of one of Ra1, Ra2, and Ra3 is C4 alkyl and the other two are H. Compound 2b anticipates claim 14 EX-8. Compound 2a anticipates claim 14, EX-123. Compound 2b anticipates claim 32, fifth moiety listed. Compounds 2a and 2b were evaluated in PBS and normal human blood serum, which is a pharmaceutically acceptable composition. Compounds 2a and 2b were prepared by reaction NHC with benzoyl chloride or pivaloyl chloride in pyridine in the absence of base, and then crystallized from methanol. See page 1104.
Claim(s) 1-4, 14-15, and 32-33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Painter (US 20190083520).
Painter teaches N4-hydroxycytidine derivatives for treating viral infections such as Zika virus. See abstract. The following compounds are disclosed on pages 63-64:
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The second compound shown above is a compound of Formula (I) wherein Ra is C1 alkyl. The compound anticipates claim 3 where R is the first moiety shown. The compound anticipates claim 4 when each of Ra1, Ra2, and Ra3 is hydrogen. The compound anticipates claim 14, EX-2. The compound was tested against viruses, so a pharmaceutical composition was disclosed.
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.
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) 1-4, 14-15, 17, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Painter (US 20190083520).
Painter teaches N4-hydroxycytidine derivatives for treating viral infections such as Zika virus. See abstract. The following compounds are disclosed on pages 63-64:
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The compound shown above is a compound of Formula (I) wherein Ra is C8 alkyl. A method of treating or preventing a Zika virus infection using the compound or a pharmaceutical composition thereof is claimed (claim 20). The genus of compounds which contains the compound is given in claim 14, where the position corresponding to the (C=O)C8 alkyl can be (C=O)alkyl generally. Painter’s definition of alkyl includes C1-10. Paragraph [0037]. The compound can be administered with other active compounds
In Painter’s compound, Ra is C8 alkyl, while the current claims require a C1-7 alkyl.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to prepare a homolog of Painter’s compound wherein Ra is C1-10 alkyl because homologs are generally expected to have similar properties, and because Painter suggests that the alkyl group can be C1-10. See MPEP 2144: “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties,” and compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. A homolog of Painter’s compound containing a C6 or C7 group instead of a C8 group would have been expected to have similar properties because of the close structural similarity. Painter’s compounds also have the same utility as the current compounds. Lastly, the claimed C1-7 lies inside the prior art range C1-10. See MPEP 2144.05. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. The proposed modification would have resulted in compound EX-14 in current claim 14.
Claim(s) 22 is rejected under 35 U.S.C. 103 as being unpatentable over Painter (US 20190083520) in view of Painter (WO 2022/174194A1, published February 15, 2022 with priority date February 15, 2021).
Painter (US) teaches as set forth above, that the antiviral compound can be administered along with another therapeutic agent. Painter does not teach that the additional therapeutic agent is one in current claim 22.
Painter (WO) teaches nucleoside compounds for treating viruses such as Zika virus. See abstract. Painter teaches that the composition may include an additional viral compound such as Paxlovid (claims 21-23).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to prepare a homolog of the Painter (US) compound as set forth above, and to combine it with Paxlovid. Painter (US) teaches that the antiviral compound can be combined with another antiviral, and Painter(WO) teaches that an additional antiviral compound to combine with a nucleoside antiviral includes Paxlovid. Paxlovid is also an antiviral compound. See MPEP 2144.06: "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art."
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Regarding claims 24-31, Ivanov teaches reaction with an acid chloride instead of an acid anhydride for preparing the ester derivatives of N4-hydroxycytidine. Although esterification using acid anhydrides is not a new concept, the use of acid anhydrides for this type of substrate results in diesterification or esterification at a different site. See page 9 of IN202121014827 (2021).
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The skilled artisan would not have modified the Paymode process to use an acid anhydride instead of an acid chloride because the skilled artisan would have expected to obtain a diesterified product or one esterified at the wrong position.
Regarding claims 5-10, the closest prior art is Painter (US 20190083520). Painter does not provide guidance that would lead the skilled artisan to the compounds of claims 5-10.
Conclusion
Claims 1-5, 8, 14-15, 17, 20-22, 25-27, and 32-33 are rejected. Claims 6-7, 9-10, 24, 28-31 are objected to as depending from a rejected base claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAYLA D BERRY whose telephone number is (571)272-9572. The examiner can normally be reached 7:00-3:00 CST, M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAYLA D BERRY/Primary Examiner, Art Unit 1693
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