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
Acknowledgement is made of original (2-3, 5), amended (1, 4), previously presented (6-16, 21, 23-25), and cancelled (17-20, 22, 26) claimed filed June 26, 2026. Claims 1-16, 21, 23-25 are pending in instant application. Claims 21, 23-25 are withdrawn for being directed to a non-elected invention. Claims 1-16 are presently examined.
Election/Restriction
Applicant’s election with traverse in the reply filed on June 26, 2026 is acknowledged.
Applicant argues Yen-Pon’s Compound 5 (CAS# 2237234-47-6) does not read on instant claim 1 due to the uncertainty of -C(O)NHMe as an acceptable R3 (see 6/26/26 Remarks at p. 37 ¶3). The uncertainty of R3 is not due to the prior art, but due to claim 1 as written as an artisan would readily appreciate the amide -C(O)NHMe could fall under “heteroalkyl” or “amino” or “alkyl substituted with oxo and amino” etc. Nevertheless, it is clear from the dependent claims -C(O)NHMe is an acceptable substituent based on the claimed species. Furthermore, Applicant states for the elected species, CAS# 2941086-37-7, R3 is a heteroalkyl, specifically -C(O)NHMe (see 6/26/26 Remarks at p. 39) so Applicant’s point is moot.
The restriction is final.
Applicant has elected Group I, claims 1-16, drawn to compounds of Formula I or compositions comprising. Claims 21, 23-25 are withdrawn for being directed to a non-elected invention.
Applicant has elected the species CAS# 2941086-37-7, which appears to read on claims 1-16.
Following extensive search and examination, the originally elected species has been deemed free of the prior art.
Per MPEP § 803.02(III)
If the examiner determines that the elected species is allowable over the prior art, the examination of the Markush claim will be extended. If prior art is then found that anticipates or renders obvious the Markush claim with respect to a nonelected species, the Markush claim shall be rejected; claims to the nonelected species would still be held withdrawn from further consideration. The prior art search will not be extended unnecessarily to cover all nonelected species.
Accordingly, Examination was extended to a non-elected species: compounds of Formula VIII-3.
Following extensive search and examination, the non-elected species was deemed anticipated and/or obvious in view of the prior art as applied below. Per MPEP § 803.02(III), claims directed to other nonelected species have been withdrawn.
Compact Prosecution: During the search and examination of the originally elected species, art pertinent to other non-elected species was incidentally discovered. Although examination has not been extended beyond the non-elected species identified above per MPEP § 803.02, as a courtesy to the Applicant, this art has been applied below.
Claims 1-16 are presently examined.
Claim Objections
Claims 1-16 are objected to because of the following informalities:
Claims 1-16 are objected to for reciting “a hydrates” which appears to be a typographical error and should read “a hydrate”.
Appropriate correction is required.
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 1-16 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.
Regarding claims 1-9, 11-14, 16, claim 1 states Y1-5 and X1-4 are N or CH, which leaves no room for substitution with R1 or R2 in the rings as shown in instant Formula I. For the purposes of applying art, it is assumed Applicant meant Y1-5 and X1-4 are N or C.
Claims 2-9, 12, 16 depend from claim 1 and are included in the instant rejection for not resolving the issue of indefiniteness. Claims 11, 13-14 partially resolves the matter by defining Y1-5 and X3-4, but still not X1-2, and are thus included in the instant rejection.
Further regarding claim 7, claim 7 recites “wherein, the saturated or partially unsaturated carbocyclyl is selected from”. It is unclear which saturated or partially unsaturated carbocyclyl the claim is referring to (L2, R1, R2, or R3, or all). For the purposes of applying art, it assumed Applicant meant to specify L2.
Further regarding claim 7, claim 7 recites “substituted by one or more substituents defined by the preceding corresponding claims” multiple times. It is unclear if the claim is referring to any preceding claim or claim 1, and if claim 1, which substituent list. For the purposes of applying art, it is assumed Applicant meant to refer to the substituents of L2 in claim 1.
Further regarding claims 8, 10, claim 8 limits claim 1 to a compound of Formula II-1 to II-6, and claim 10 limits claim 1 to a compound of Formula IV-1 to IV-6. However, the dependent Formulas have M1-M3 substituents which are not defined in claim 1. For the purposes of applying art, the M1-M3 substituents are understood to be selected from the structural limitations in claim 2.
Further regarding claims 1-9, 12-14, 16 and claims 10-11, 15, the phrase "preferably" and the use of parentheses for “(preferably a deuterate)” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase/in the parentheses are part of the claimed invention. See MPEP § 2173.05(d). The Examiner suggests omitting the parenthetical limitation.
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.
Claims 1-6, 8-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yen-Pon et. al.1
Regarding claims 1-6 and a Compound of Formula I, Yen-Pon teaches Compound 5, also known as CAS# 2237234-47-6 (see Yen-Pon at p. 3).
Yen-Pon
Compound 5
CAS# 2237234-47-6
Instant Formula I
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Compound 5 reads on instant Formula I wherein M is
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(see instant claim 2), L1 is -C(=O)NRL1a, RL1a is amino-substituted alkyl specifically -CH2CH2NH-, L2 is a partially unsaturated carbocycle specifically 3-cyclobutene-1,2-dione, L3 is a bond, L4 is a heterochain specifically -NHCH2-, Y1-5 are C and n is 5 and R1 is H, L5 is NRL5a, L5a is H, X1 and X2 are N, X3 is CR2, m is 1 and R2 is halogen specifically chlorine, L6 is -NRL6a, RL6a is H, A is phenyl, p is 1, R3 is heteroalkyl, specifically -(C=O)NHMe, notably an allowed substituent given instant compound 12 (see instant claim 15, see also 6/26/26 Remarks at p. 39).
Regarding a compound of Formula II-2 and claim 8, CAS# 2237234-47-6 reads on instant Formula II-2 as discussed above for Formula I and wherein M1-M3 are H as discussed in claim 2.
Yen-Pon
Compound 5
CAS# 2237234-47-6
Instant Formula II-2
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Regarding a compound of Formula III and claim 9, CAS# 2237234-47-6 reads on instant Formula III as discussed above for Formula I and wherein k is 0, v is 1, and RL4d and RL4e are H.
Yen-Pon
Compound 5
CAS# 2237234-47-6
Instant Formula III
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Regarding a compound of Formula IV-2 and claim 10, CAS# 2237234-47-6 reads on instant Formula IV-2 as discussed above for Formula I and wherein M1-M3 are H as discussed in claim 2.
Yen-Pon
Compound 5
CAS# 2237234-47-6
Instant Formula IV-2
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Regarding a compound of Formula V and claim 11, CAS# 2237234-47-6 reads on instant Formula V-1 as discussed above for Formula I.
Yen-Pon
Compound 5
CAS# 2237234-47-6
Instant Formula V-1
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Regarding a compound of Formula and claim 12, CAS# 2237234-47-6 reads on instant Formula VI-1 as discussed above for Formula I.
Yen-Pon
Compound 5
CAS# 2237234-47-6
Instant Formula VI-1
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Regarding a compound of Formula VII-2 and claim 13, CAS# 2237234-47-6 reads on instant Formula VII-2 as discussed above for Formula I and wherein M1-M3 are H as discussed in claim 2, k is 0, v is 1, RL4d and RL4e are H, and G1 and G2 are CH.
Yen-Pon
Compound 5
CAS# 2237234-47-6
Instant Formula VII-2
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Regarding a compound of Formula VIII-2 and claim 14, CAS# 2237234-47-6 reads on instant Formula VIII-2 as discussed above for Formula I and wherein M1-M3 are H as discussed in claim 2, k is 0, v is 1, RL4d and RL4e are H, X2 and X2 are N, and G1 and G2 are CH.
Yen-Pon
Compound 5
CAS# 2237234-47-6
Instant Formula VIII-2
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Regarding a composition and claim 15, Yen-Pon teaches CAS# 2237234-47-6 has antiproliferative properties against squamous cell carcinoma cells (see Yen-Pon. at p. 2070 “Antiproliferation Activity of Compound 5 in SCC Cells”). Yen-Pon teaches to conduct this study, the disclosed compounds were dissolved in DMSO (see Yen-Pon at p. 2072 “Inhibition of FAK Autophosphorylation in SCC Cells”). The instant specification includes “any solvent” as an embodiment of “pharmaceutically acceptable excipient” (see instant spec. at p. 91 lines 8-11). Accordingly, CAS# 2237234-47-6 in DMSO reads on instant “composition comprising a compound according to claim 1…and a pharmaceutically acceptable excipient”.
Claims 1-10, 12, 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 8,338,439 B2 to Singh et. al.2
Regarding claims 1-7 and a compound of Formula I, Singh teaches kinase inhibitors such as CAS# 1202756-67-9 (see Singh at Abstract and at col. 250 Example 1 Compound I-7).
CAS# 1202756-67-9
Instant Formula I
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CAS# 1202756-67-9 reads on instant Formula I when M is
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specifically
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, L1 is -C(=O)-, L2 is heterocyclyl, specifically piperidyl, L3 is a bond L4 is a heterochain with 2 atoms specifically -NH-, Y1-Y5 are CH, L5 is -NRL5a- and RL5a is H, X1 and X4 are N, X2-X3 are CH, m is 1 and R2 is alkyl specifically methyl, L6 is -NRL6a- and RL6a is H, A is phenyl, and p is 0.
Regarding claim 8 and a compound of Formula II-3, CAS# 1202756-67-9 reads on instant Formula II-3 as discussed above for Formula I and wherein M1-M3 are H as discussed in claim 2 and B is a saturated N heterocyclyl specifically piperidinyl.
CAS# 1202756-67-9
Instant Formula II-3
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Regarding claim 9 and a compound of Formula III, CAS# 1202756-67-9 reads on instant Formula III as discussed above for Formula I and wherein k and v are 0, and RL4a is H.
CAS# 1202756-67-9
Instant Formula
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Regarding claim 10 and a compound of Formula IV-3, CAS# 1202756-67-9 reads on instant Formula IV-3 as discussed above for Formula I and wherein M1-M3 are H as discussed in claim 2, B is a saturated N heterocyclyl specifically piperidinyl, k and v are 0, and RL4a is H.
CAS# 1202756-67-9
Instant Formula IV-3
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Regarding claim 12 and a compound of Formula VI-1, CAS# 1202756-67-9 reads on instant Formula VI-1 as discussed above for Formula I.
CAS# 1202756-67-9
Instant Formula VI-1
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Regarding claim 15 and a composition, Singh teaches a composition comprising a disclosed compound and a pharmaceutically acceptable adjuvant, carrier, or vehicle (see Singh at claim 2), reading on instant “excipient”.
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 11, 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Singh as applied to claims 1-10, 12, 15 above.
Recall Singh teaches CAS# 1202756-67-9.
Regarding claim 11 and a compound of Formula V-1, CAS# 1202756-67-9 correlates with Formula V-1 as discussed above for Formula I.
CAS# 1202756-67-9
Instant Formula V-1
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Regarding claim 13 and a compound of Formula VII-3, CAS# 1202756-67-9 correlates instant Formula VII-3 as discussed above for Formula I and wherein G1 and G2 are CH, M1-M3 are H as discussed in claim 2, and B is a saturated N heterocyclyl specifically piperidinyl.
CAS# 1202756-67-9
Instant Formula VII-3
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Regarding claim 14 and a compound of Formula VIII-3, CAS# 1202756-67-9 correlates with Formula VIII-3 as discussed above for Formula I and wherein G1 and G2 are CH, M1-M3 are H as discussed in claim 2, B is a saturated N heterocyclyl specifically piperidinyl.
CAS# 1202756-67-9
Instant Formula VIII-3
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The prior art differs from the instant claims as follows: While Singh teaches CAS# 1202756-67-9, instant Formulas V-1, VII-3, and VIII-3 differ in the isomeric flip of the pyrimidine (the ring with X1 and X2).
However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to arrive at the instantly claimed invention with a reasonable expectation of success in view of the prior art for at least the following reason(s):
Regarding an isomeric change, per MPEP § 2144.09(I)-(II), “[a] prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities” because “[c]ompounds which are…isomers…are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties” (see, e.g., MPEP § 2144.09(I)-(II)), and the Court has stated that “[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR, 127 S.Ct. at 1740. Here, the prior art teaches highly similar structural isomers of the instantly claimed invention, wherein such isomers have the same utility as the instantly claimed kinase inhibitors; accordingly, an artisan would readily appreciate that such compounds could be utilized in the inhibition of a kinase, as taught and suggested in view of the prior art.
Furthermore, it is well-within the ordinary skill in art to make and use an isomer of a known compound.
Therefore, an artisan would arrive at the same invention as presently claimed for reasons taught in the prior art.
Conclusion
Claims 1-16 are objected to.
Claims 1-16 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOPHIA J REILLY whose telephone number is (703)756-5669. The examiner can normally be reached 9:00 am - 5:00 pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KORTNEY KLINKEL can be reached at 571-270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.R./Examiner, Art Unit 1627
/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627
1 Cite No. 2 in ths IDS filed 6/12/24. Yen-Pon et. al. "Structure-Based Design, Synthesis, and Characterization of the First
Irreversible Inhibitor of Focal Adhesion Kinase" ACS Chem Biol 2018, 13, 2067-2073. DOI: 10.1021/acschembio.8b00250 Hereinafter Yen-Pon.
2 Patented December 25, 2012.
Prosecution Insights