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 .
DETAILED ACTION
Claims 1-2 are pending in the instant application.
Claims 1-2 are examined herein.
Priority
Acknowledgement is made of the applicant’s claim for foreign priority. It is noted, however, that applicant has not provided an English translation of the certified copy of Japanese Patent No. 2021-206008, filed on 20 December 2021, as required by 35 U.S.C. 119(b). The priority date of the instant application is that of PCT/JP2022/046579, file on 19 December 2022. Without the English translation, one cannot ascertain if the instant invention is present in the Japanese patent. Therefore, art prior to the PCT date, but not before the date of the Japanese application may be cited against the claims.
Information Disclosure Statement
The information disclosure statement (IDS), submitted on 27 August 2024, is acknowledged and considered. The submissions are in compliance with the provisions of 37 CFR 1.97.
Claim Interpretation
Claims 1-2 are directed to a composition; as such, the intended use (i.e. for inhibiting SREBP-1 and treating hypertriglyceridemia) does not alter the chemical structure(s) of composition and is therefore not further limiting. See MPEP 2111.02.II:
[S]tatements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963) (The claims were directed to a core member for hair curlers and a process of making a core member for hair curlers. The court held that the intended use of hair curling was of no significance to the structure and process of making.); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962) (statement of intended use in an apparatus claim did not distinguish over the prior art apparatus). To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board’s factual finding that the reference dispenser (a spout disclosed as useful for purposes such as dispensing oil from an oil can) would be capable of dispensing popcorn in the manner set forth in appellant’s claim 1 (a dispensing top for dispensing popcorn in a specified manner)) and cases cited therein.
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) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dasgupta et al. (WO2017152032A1)
Regarding claim 1, Dasgupta discloses compounds of Formula (I) (claim 1) which includes preferred embodiment II-208 (pictured below)(page 147), which is the instant compound of Formula (1).
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165
1063
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Regarding claim 2, Dasgupta discloses the pharmaceutical composition of Formula (I) comprising a pharmaceutically acceptable carrier (claim 124).
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tucker et al. (WO2010042445A1).
Regarding claim 1, Tucker discloses compounds of Formula (I), which includes the preferred embodiment of compound 100 (pictured below)(paragraph [0236]) which is the instant compound of Formula (3).
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204
231
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Regarding claim 2, Tucker discloses the pharmaceutical composition of the reference compounds comprising a pharmaceutically acceptable carrier (paragraph [0076]).
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/38630706), referred to herein as PubChem 1.
Regarding claim 1, PubChem 1 discloses N,N-dimethyl-4-[[2-[[2-(4-propan-2-ylphenyl)-1,3-thiazol-4-yl]methylsulfanyl]acetyl]amino]benzamide, instant Formula (1), created on 29 May 2009.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/98273874), referred to herein as PubChem 2.
Regarding claim 1, PubChem 2 discloses instant Formula (2), created on 11 December 2015.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/1825879), referred to herein as PubChem 3.
Regarding claim 1, PubChem 3 discloses instant Formula (3), created on 12 July 2005.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/7247287), referred to herein as PubChem 4.
Regarding claim 1, PubChem 4 discloses 4-benzyl-2-benzylsulfanyl-5-methyl-1H-imidazole, or instant Formula (4), created on 29 July 2006.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/24394436), referred to herein as PubChem 5.
Regarding claim 1, PubChem 5 discloses (2-Propoxyphenyl) 2-(3-oxo-1,4-benzoxazin-4-yl)acetate, or instant Formula (5), created on 29 February 2008.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/14638942), referred to herein as PubChem 6.
Regarding claim 1, PubChem 6 discloses5-Amino-3-methylsulfanyl-1-(4-nitrophenyl)pyrazole-4-carboxamide, or instant Formula (6), created on 09 February 2007.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/135763941), referred to herein as PubChem 7.
Regarding claim 1, PubChem 7 discloses 4-ethyl-2-[3-(trifluoromethyl)anilino]-1H-pyrimidin-6-one, or instant Formula (7), created on 17 January 2019.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/17024741), referred to herein as PubChem 8.
Regarding claim 1, PubChem 8 discloses 4-Cyclopropyl-6-(trifluoromethyl)-1H-pyrazolo[3,4-b]pyridin-3-amine, or instant Formula (8), created on 13 November 2007.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/17022988), referred to herein as PubChem 9.
Regarding claim 1, PubChem 9 discloses (2E)-3-{5-[(3-chloro-2-methylphenoxy)methyl]furan-2-yl}-1-cyclopropylprop-2-en-1-one, or instant Formula (9), created on 13 November 2007
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/613528), referred to herein as PubChem 10.
Regarding claim 1, PubChem 10 discloses 3-Amino-4,6-dimethylthieno(2,3-b)pyridine-2-carboxamide, or instant Formula (10), created on 06 June 2006.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/9420996), referred to herein as PubChem 11.
Regarding claim 1, PubChem 11 discloses 1-[4-[2-(Prop-2-enylamino)-1,3-thiazol-4-yl]phenyl]pyrrolidin-2-one, or instant Formula (11), created on 31 July 2006
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/40027364), referred to herein as PubChem 12.
Regarding claim 1, PubChem 12 discloses 2,2-dimethyl-N-[2-oxo-2-[4-(1H-pyrrolo[2,3-b]pyridin-3-yl)-3,6-dihydro-2H-pyridin-1-yl]ethyl]propanamide, or instant Formula (12), created on 30 May 2009.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/40138089), referred to herein as PubChem 13.
Regarding claim 1, PubChem 13 discloses [4-(1H-pyrrolo[2,3-b]pyridin-3-yl)-3,6-dihydro-2H-pyridin-1-yl]-thiophen-2-ylmethanone, or instant Formula (13), created on 30 May 2009.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/24533822), referred to herein as PubChem 14.
Regarding claim 1, PubChem 14 discloses [2-(2,5-Dimethyl-1-prop-2-enylpyrrol-3-yl)-2-oxoethyl] 2,4-dimethyl-6-oxopyran-3-carboxylate, or instant Formula (14), created on 29 February 2008.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/3713338), referred to herein as PubChem 15.
Regarding claim 1, PubChem 15 discloses 7-Bromo-1,2,3,9-tetrahydropyrrolo[2,1-b]quinazolin-9-ol, or instant Formula (15), created on 10 September 2005.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/5280953), referred to herein as PubChem 16.
Regarding claim 1, PubChem 16 discloses Harmine, or instant Formula (16), created on 25 March 2005.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/756730), referred to herein as PubChem 17.
Regarding claim 1, PubChem 17 discloses N-ethyl-N-(4-methoxyphenyl)-7H-purin-6-amine, or instant Formula (17), created on 08 July 2005.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/16323669), referred to herein as PubChem 18.
Regarding claim 1, PubChem 18 discloses 3-[[5-(5-Methyl-4,5,6,7-tetrahydro-1-benzothiophen-2-yl)-1,3,4-oxadiazol-2-yl]sulfanyl]oxolan-2-one, or instant Formula (18), created on 30 July 2007.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/59757974), referred to herein as PubChem 19.
Regarding claim 1, PubChem 19 discloses instant Formula (19), created on 20 August 2012.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/16041610), referred to herein as PubChem 20.
Regarding claim 1, PubChem 20 discloses 5-(3-fluorophenyl)-N-(piperidin-3-yl)-3-ureidothiophene-2-carboxamide, or instant Formula (20), created on 23 April 2007.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/10158940), referred to herein as PubChem 21.
Regarding claim 1, PubChem 21 discloses instant Formula (21), created on 25 October 2006.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/104842), referred to herein as PubChem 22.
Regarding claim 1, PubChem 22 discloses 7-Ethyl-10-Hydroxycamptothecin, or instant Formula (22), created on 26 March 2005.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PubChem (https://pubchem.ncbi.nlm.nih.gov/compound/9903786), referred to herein as PubChem 23.
Regarding claim 1, PubChem 23 discloses instant Formula (23), created on 25 October 2006.
Conclusion
Claims 1-2 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jerica K Wilson whose telephone number is (703)756-4690. The examiner can normally be reached Monday-Friday 9:00-5:00.
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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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/J.K.W./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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