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 .
Status of Claims
Claims 1-15 are pending.
Priority
Instant application 18/710,749, filed 05/16/2024 claims priority as follows:
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Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
All references from IDS(s) received 05/16/2024, 11/26/2025, and 05/06/2026 have been considered unless marked with a strikethrough.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-13), and the species compound N-((5-(2- fluorophenyl)-1-((4-fluorophenyl)sulfonyl)-1H-pyrrol-3-yl)methyl)methan-d3-amine (claims 1-4 and 6-13) in the reply filed on 08/14/2026 is acknowledged.
Claims 5, 14, and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/14/2026.
Examination will begin with the elected species. In accordance with MPEP 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be examined again. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. In the event prior art is found during further examination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final.
The elected species was searched, and applicable prior art was not identified. Therefore, the scope of the search was expanded to encompass a limited number of species encompassed by the prior art in accordance with MPEP 803.02. See the prior art rejections further below.
Claim Interpretation
Under broadest reasonable interpretation, the recitation “for preventing or treating gastrointestinal diseases” in claims 10 and 11 is being interpreted as a statement of intended use. While the preamble recitation of intended use in claims 10 and 11 is not being treated as a limitation, claim 10 is distinguished from claim 1 because it requires only the compound or pharmaceutically acceptable salt; and claim 12 is distinguished from claim 1 because it requires only the compound or sitologically acceptable salt.
However, claims 11 and 13 are not distinct from claims 10 and 12, respectively. The recitation “for preventing or improving gastrointestinal diseases” in claims 11 and 13 is being interpreted as a statement of intended use, and the particular diseases listed in claims 11 and 13 are further directed toward the intended use and are not being treated as claim limitations.
See MPEP 2111.02, which states: “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”.
Please note the duplicate claims warning and rejection under 112(d) further below which are necessitated by the interpretation of claims 10-13.
Claim Objections
Applicant is advised that should claim 10 be found allowable, claim 11 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. Should claim 12 be found allowable, claim 13 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof.
In view of the interpretation of the preambles for claims 10-13 as reciting intended use and not having any significance to claim construction, claim 11 is being interpreted as a substantial duplicate of claim 10; and claim 13 is being interpreted as a substantial duplicate of claim 12.
When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112(d)
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 11 and 13 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. In view of the examiner’s above claim interpretation, claim 11 fails to further limit claim 10 from which it depends; and claim 13 fails to further limit claim 12 from which it depends. Therefore, claims 11 and 13 are rejected.
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
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.
(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 1-4, 6-8, and 10-13 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by LUO (WO 2023280288 A1; earliest priority date 09 July 2021).
Luo discloses pyrrole sulfonyl derivatives as gastric acid secretion inhibitors (title, abstract). Luo discloses, for example, compound 29-2 (Luo, page 39):
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Luo’s compound 29-2 reads on instant Formula 1 when R2 and R3 are hydrogen and R4 is halogen (fluoro); R5 is hydrogen; and R1 is pyridinyl, substituted with halogen (bromo). Compound 29-2 anticipates claims 1-3, 6-8, and 10-13.
Luo also discloses the compound (page 49):
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The above compound reads on instant Formula 1 when R2 and R3 are hydrogen and R4 is halogen (fluoro); R5 is hydrogen; and R1 is phenyl, substituted alkoxy (methoxy). The claims and specification do not clarify whether “C1-C6 alkoxy” and “methoxy” covers only unsubstituted alkoxy/methoxy groups or also substituted alkoxy/methoxy groups. The substituent
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is being interpreted as a substituted methoxy group. Therefore, the above compound is being interpreted as reading on the claims and anticipates claims 1-4, 6-8, and 10-13.
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 1-4 and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over KAJINO (US 20080262042 A1; published 2008) in view of GENG (US 20200030306 A1; published 2020; cited previously).
The instant claims are drawn to compounds of formula 1, which are vonoprazan analogs having a deuterated terminal N-methyl. Claim 9 recites, for example, compound 33) N-(1-((4-fluorophenyl)sulfonyl)-5-(2-fluoropyridin-3-yl)-1H-pyrrol-3-yl)methyl)methan-d3-amine, having the structure:
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Kajino discloses the compound example 20 (Table 16, page 91):
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.
Kajino additionally teaches that compounds labeled with an isotope (including deuterium isotopes where 1H has been converted to 2H) are also encompassed in the disclosed compound genus.
Kajino’s compound would read on claims 1-4 and 6-13, but the compound is different from the claimed compound because it does not comprise a deuterated terminal N-methyl group.
However, Geng represents close prior art and teaches deuterated vonoprazan analogs of formula (Geng, para. [0032]):
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In which R1-R14 are each independently selected from hydrogen and deuterium, provided that at least one of R1-R14 is deuterium. More specifically, Geng teaches compounds in which both the terminal N-methyl and the adjacent methylene are deuterated (see Geng, [0041], Compound 2):
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Additionally, Geng teaches that deuteration of vonoprazan analogs reduces the problem of adverse drug metabolism (Geng, [0049]) responsible for the parent compound’s pharmacokinetic limitations and metabolite-mediated toxicity; that the terminal methyl is a position available for deuteration; and that such deuteration produces the predictable and experimentally demonstrated result of increased plasma exposure relative to vonoprazan (Geng, Table 3, TAK-438d2).
Geng’s generic disclosure independently embraces the claimed genus. Formula (I) recites that R1-R14 are each independently selected from hydrogen and deuterium, provided that at least one of R1-R14 is deuterium, which reads on the species in which only the N-methyl positions are deuterated.
Applying at least KSR example rationale (G), it would have been prima facie obvious to modify Kajino’s compounds, such as the compound of example 20, by deuterating the terminal methyl group. Both Kajino and Geng teach preparation of deuterated isotopes of the compounds therein. Moreover, Geng provides a motivation for deuterating the terminal methyl group in view of the compound 20 example as well as the teaching that deuteration reduces the problem of adverse drug metabolism.
Therefore, claims 1-4 and 6-13 are rejected.
Conclusion
Claims 1-4 and 6-13 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Nottingham whose telephone number is (571)270-0640. The examiner can normally be reached M-F from 10:00 am - 6:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571) 270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.N./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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