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 .
Election/Restrictions
Applicant's election with traverse of Group I, drawn to an isoindolinone derivative compound represented by Formula I, a hydrate thereof, a solvate thereof or a pharmaceutically acceptable salt thereof; and a pharmaceutical composition comprising the same; and the following species:
Compound No. 55: 3-((S)-2-(6-(2,3-dihydrobenzo[b][1,4]dioxin-6-yl)-1-oxoisoindolin-2-yl)butanamido)-5-fluoro-4-oxopentanoic acid as the elected species of isoindolinone derivative compound
in the reply filed on July 31, 2026 is acknowledged. The traversal is on the ground(s) that the prior art cited in the previous Office Action mailed on June 1, 2026, i.e., Golec et al. (WO 01/42216 A2; cited in the IDS filed on March 10, 2025) does not read on the amended claims submitted on July 31, 2026, which was filed after the mailing date of the previous Office Action. Applicant argues Golec et al. fails to teach or suggest the R3 of Formula I instantly claimed. This is not found persuasive because the restriction requirement was made in view of the originally presented invention rather than the claims submitted on July 31, 2026. Specifically, the prior-filed claims recite “R3 is halogen or Q, wherein Q is substituted or unsubstituted with 1 to 3 independent Ra, and Q is aryl, aminoaryl, heteroaryl or non-aromatic heterocyclic”. The fact that Golec et al. teaches a compound of Example 13, and further teaches each carbon with suitable valence in Ring A of Formula I, including the fused ring, is independently substituted by, inter alia, halo or R, and R can be non-aromatic heterocyclic group, such as 1-pyrrolidinyl (see e.g., p. 5 to p.6 of the previous Office Action), the substituent(s) that could be attached to the carbon of the fused ring in Ring A as taught by Golec et al. clearly reads on the R3 originally filed. In other words, the restriction requirement of record clearly established that the original claims dated June 19, 2024 do not share a special technical feature between the groups of inventions and the groups of species in view of Golec et al., the unity of invention is not present at the time.
The requirement is still deemed proper and is therefore made FINAL.
Please note the elected compound No. 55, when reasonably construed in view of Example 55 on page 54 of the specification and the Pre-Grant Publication US20250109135A1 published on April 3, 2025, is determined to have the chemical structure of:
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Claims 5 and 7-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on July 31, 2026.
Please note applicant indicates the elected species reads on claims 1 and 3-10 in the reply; However, the Examiner determined that claims 5 are drawn to a nonelected species. Specifically, claim 5 recites a specific Ra group, but the elected compound species contains an unsubstituted Q at R3, and that does not contain the Ra substituents.
Expansion of Election of Species Requirement
A reasonable and comprehensive search of the elected species conducted by the Examiner
discover a prior art by Golec et al. that renders obvious the claimed invention, i.e., 3-(2-(6-bromo-1-oxoisoindolin-2-yl)butanamido)-5-fluoro-4-oxopentanoic acid. In light of this discovery, the search is expanded to the subject matter of the compound species to include 3-(2-(6-bromo-1-oxoisoindolin-2-yl)butanamido)-5-fluoro-4-oxopentanoic acid in addition to the elected compound species, i.e., Compound No. 55, such that it does not encompass the full scope of the claims.
Status of Claims
Acknowledgement is made of the receipt and entry of the amendment to the claims filed on July 31, 2026, wherein claims 1 and 4-6 are amended; claims 2 and 11-12 are cancelled; and claims 3 and 7-10 are unchanged.
Claims 1 and 3-10 are pending.
Claims 5 and 7-9 are withdrawn.
Claims 1, 3-4, 6, and 10 are under examination in accordance with the elected species along with the expanded compound species set forth in the Expansion of Election of Species Requirement section above.
Priority
The instant application 18/721,811 filed on June 19, 2024 is a 371 of PCT/KR2023/000101 filed
on January 3, 2023, which claims priority to, and the benefits of Foreign Application No. KR10-2022-0000659 filed on January 4, 2022.
Receipt is acknowledged of a certified copy of foreign application KR10-2022-0000659, however the present application does not properly claim priority to the submitted foreign application. The disclosure of the foreign application is written in foreign language (Korean), and does not contain the elected Compound No. 55, (3-((S)-2-(6-(2,3-dihydrobenzo[b][1,4]dioxin-6-yl)-1-oxoisoindolin-2-yl)butanamido)-5-fluoro-4-oxopentanoic acid). Therefore, to the extent that the claims are drawn to the elected Compound No. 55, they are not entitled to the benefit of foreign application and will receive an effective filing date of January 3, 2023, which is the filing date of 371 of PCT/KR2023/000101.
If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a), applicant must also file a claim for such priority as required by 35 U.S.C. 119(b) or 365(b), and 37 CFR 1.55. If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.
If the application being examined is an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(d)(1). If the application being examined is a national stage application under 35 U.S.C. 371, the claim for priority must be made within the time limit set forth in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2). Any claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) not presented within the time period set forth in 37 CFR 1.55 is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55, the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the applicable petition fee under 37 CFR 1.17(m)(1) or (m)(2).
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 6/19/2024, 3/10/2025, 8/20/2025, 9/30/2025 and 11/13/2025 are in compliance with the provisions of 37 CFR 1.97 unless otherwise noted. Accordingly, the information disclosure statement is being considered by the examiner.
The IDS submitted on 9/30/2025 contains duplicate reference that has been cited in the prior-filed IDS dated 8/20/2025. Specifically, Knegtel et al. (cited under “U.S. Patents”, no. 1 in IDS filed on September 30, 2025) is duplicated. Thus, said reference has been lined through in the IDS as they have already been considered by the Examiner.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the abstract is not being concise as it contains more than one paragraph. The abstract also contains phrases which can be implied, specifically, the abstract repeatedly described the compound disclosed therein is novel, for instance, novel isoindolinone derivative compound”, and said term “novel” should deleted from the language of the abstract. Once the determination of the novelty of a claimed invention has been established and the disclosure of the invention made public and/or patented, the claimed invention is no longer novel or new, since the scope of the invention no longer embraces what is considered “novel”. Thus, the incorporation of the term “novel” into the language of the abstract is not appropriate. Appropriate correction is required.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
According to MPEP 606 with respect to the Title of Invention, the term “Novel” should not be included at the beginning of the title of the invention and will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues. Once the determination of the novelty of a claimed invention has been established and the disclosure of the invention made public and/or patented, the claimed invention is no longer novel or new, since the scope of the invention no longer embraces what is considered “novel”. Thus, the incorporation of the term “novel” into the title of the Invention is not appropriate.
The following title is suggested: “ISOINDOLINONE DERIVATIVE COMPOUNDS AS CASPASE INHIBITORS”
The disclosure is objected to because of the following informalities:
the specification repeatedly recites the term “novel” to describe the inventions, for instance, “novel isoindolinone derivative compounds” (see e.g., page 1, line 6); “novel structured” (see e.g., p. 1, line 25); “novel structure” (see e.g., p. 1, line 33). The term “novel” should be deleted from the language of the disclosure. Once the determination of the novelty of a claimed invention has been established and the disclosure of the invention made public and/or patented, the claimed invention is no longer novel or new, since the scope of the invention no longer embraces what is considered “novel”. Thus, the incorporation of the term “novel” into the language of the specification is not appropriate.
<Scheme 1> to <Scheme 64> are blurry and unreadable, it is not clear what are the chemical structures, reagents, conditions, and the texts displayed therein.
Appropriate correction is required.
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 1, 3-4, 6, and 10 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 claim 1, the recitation of “unsubstituted with 1 to 3 independent Ra” in the phrase of “wherein Q is substituted or unsubstituted with 1 to 3 independent Ra” renders the claim indefinite, because it can lead to numerous interpretations. For instance, said recitation can be interpreted such that (i) Q is substituted or (unsubstituted with 1 to 3 independent Ra), such that Q can be substituted with any group, and Q is unsubstituted with 1 to 3 independent Ra, which appears to be nonsensical; or (ii) Q is (substituted or unsubstituted) with 1 to 3 independent Ra, such that Q can either be substituted with 1 to 3 independent Ra, or unsubstituted with 1 to 3 independent Ra, which is also nonsensical. The specification does not provide a definition for “unsubstituted with 1 to 3 independent Ra”, and one of ordinary skill in the art would not have reasonably apprised of the scope of the invention. Therefore, the metes and bounds of Q is indefinite. Accordingly, claims 3-4, 6, and 10 are rejected based on their dependency on a rejected base claim.
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.
Claims 1, 3-4, 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Golec et al. (WO 01/42216 A2; cited in the IDS filed on March 10, 2025), in view of Bolchi et al. (European journal of medicinal chemistry, 2020. Vol. 200, 112419).
Golec et al. teaches a compound of Example 14, 5-fluoro-4-oxo-3-[(2S)-2-(1-oxo-1,3-dihydro-isoindol-2-yl)-propionylamino]-pentanoic acid, having the structure of:
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as an exemplary compound of formula I useful as caspase inhibitors and as component of immunotherapy for treatment of cancer (see e.g., p. 37, line 1-5; p. 18, line 3-17; abstract; claim 27); and a composition comprising the compound or a pharmaceutically acceptable salt thereof, and a pharmaceutically acceptable carrier (see e.g., p. 57, line 29 to p. 58, line 2). Please note the pharmaceutically acceptable carrier taught by Golec et al. is the “pharmaceutically acceptable additive” instantly claimed. Golec et al. further teaches the compounds having the general formula I:
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, wherein R3 is hydrogen or a C1-6 straight chain or branched alkyl; Ring A contains zero to two double bonds, and is optionally fused to a saturated or unsaturated five to seven membered ring containing zero to three heteroatoms; each carbon with suitable valence in Ring A, including the fused ring if present, is independently substituted by, inter alia, halo or R; R is, inter alia, an aryl group, a substituted aryl group (see e.g., p. 6, line 1 to 7, line 7). Golec et al. further teaches aryl groups also include fused polycyclic aromatic ring systems in which one or more carbocyclic aromatic rings and/or heteroaryl rings are fused to a cycloalkyl or non-aromatic heterocyclic ring, for example, tetrahydrobenzopyranyl (see e.g., p. 10, line 5-17). Golec et al. further teaches structures depicted herein are also meant to include all stereochemical forms of the structure (see e.g., p. 12, line 21-23). Golec et al. further teaches other exemplary compounds of formula I, such as Example 18 having the structure of:
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and Example 21 having the structure of:
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(see e.g., p. 42, line 25-28; p. 48, line 3-5).
Golec et al. does not teach the elected compound species.
Bolchi et al. teaches 1,4-benzodioxane has long been a versatile template widely employed to design molecules endowed with diverse bioactivities (see e.g., abstract; p. 2, right column, 2nd paragraph). Bolchi et al. further teaches medicinal chemists use benzodioxane in designing new anticancer agents (see e.g., p. 8, right column, last paragraph), including replacement of other cyclic systems, such as naphthalene, aimed at improving drug likeness and selectivity (see e.g., p. 12, right column, last paragraph). Bolchi et al. further teaches the benzodioxane scaffold can be found in a series of molecules proposed for different targets on the basis of new therapeutic approaches and strategies; For instance, a number of benzodioxanes 6-substituted with different penta-atomic heterocycles have been reported as inhibitors of enzymes that are potential therapeutic targets in cancer because playing critical role in cell proliferation, survival and motility or because necessarily more active in tumor than in normal cells (see e.g., p. 8, right column, last paragraph to p. 9, left column, line 3), including compound 31 having the structure of:
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(see e.g., Fig. 9).
Please note the difference between the compound of Example 14 of Golec et al. and the claimed invention is shown below (see shaded):
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It would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to arrive at the claimed invention by selecting the compound of Example 14 of Golec et al., and then modifying said compound by replacing methyl with ethyl at R3, and then further introducing the 1,4-benzodioxane-containing substituent at an available carbon of the benzo-fused ring of the isoindolinone moiety to arrive at applicant’s claimed elected compound.
One would have been motivated to modify the compound of Example 14 of Golec by selecting ethyl for R3 and by introducing the 1,4-benzodioxane-containing substituent at an available carbon of the benzo-fused ring of the isoindolinone moiety. Golec expressly teaches that R3 may be C1-6 straight or branched alkyl group and exemplifies closely related compounds containing methyl and ethyl at R3 (Examples 18 and 21), thereby providing an express teaching that either methyl or ethyl may be employed at this position of the disclosed Formula I scaffold.
Golec additionally teaches that a carbon atom having suitable valence within Ring A, including the fused ring, may be independently bear a substituted R, wherein R encompasses any aryl or substituted aryl, including fused polycyclic aromatic/heteroaryl ring systems. Thus, Golec itself directs the skilled artisan to functionalization of the benzo-fused portion of the Formula I with fused polycyclic aromatic- and heteroaryl-containing substituents. Bolchi provides the reason for selecting a 1,4-benzodioxane-containing group from among such substituents. In particular, Bolchi teaches that 1,4-benzodioxane is a versatile medicinal chemistry scaffold employed in the design of bioactive compounds, including anticancer agents, and teaches the use in place of other cyclic systems for the purpose of improving properties such as drug-likeness and selectivity. Bolchi further reports 6-substituted benzodioxane derivatives directed to enzyme targets implicate in cancer. Accordingly, in view of Golec’s expressing teaching permitting substitution at the benzo-fused ring and Bolchi’s teaching of 1,4-benzodioxane as a useful scaffold for designing anticancer bioactive compounds and improving drug-like properties, one of ordinary skill in the art would have had a reason to select the benxodioxane-containing substituent taught by Bolchi for incorporation at the substitutable position taught by Golec, thereby, arriving at the claimed elected structure.
Therefore, the claimed invention is prima facie obvious to one of ordinary skill in the art at the time the application was filed, absent factual evidence to the contrary.
Claims 1, 3-4, 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Golec et al. (WO 01/42216 A2; cited in the IDS filed on March 10, 2025).
Golec et al. teaches a compound of Example 14, 5-fluoro-4-oxo-3-[(2S)-2-(1-oxo-1,3-dihydro-isoindol-2-yl)-propionylamino]-pentanoic acid, having the structure of:
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as an exemplary compound of formula I useful as caspase inhibitors and as component of immunotherapy for treatment of cancer (see e.g., p. 37, line 1-5; p. 18, line 3-17; abstract; claim 27); and a composition comprising the compound or a pharmaceutically acceptable salt thereof, and a pharmaceutically acceptable carrier (see e.g., p. 57, line 29 to p. 58, line 2). Please note the pharmaceutically acceptable carrier taught by Golec et al. is the “pharmaceutically acceptable additive” instantly claimed. Golec et al. further teaches the compounds having the general formula I:
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, wherein R3 is hydrogen or a C1-6 straight chain or branched alkyl; Ring A contains zero to two double bonds, and is optionally fused to a saturated or unsaturated five to seven membered ring containing zero to three heteroatoms; each carbon with suitable valence in Ring A, including the fused ring if present, is independently substituted by, inter alia, halo (see e.g., p. 6, line 1 to 7, line 7). Golec et al. further teaches the term “halogen” means F, Cl, Br or I (see e.g., p. 9, line 20-21). Golec et al. further teaches other exemplary compounds of formula I, such as Example 18 having the structure of:
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and Example 21 having the structure of:
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(see e.g., p. 42, line 25-28; p. 48, line 3-5).
Please note difference between the compound of Example 14 and the claimed compound, i.e., expanded compound species 3-(2-(6-bromo-1-oxoisoindolin-2-yl)butanamido)-5-fluoro-4-oxopentanoic acid, is shown below (see shaded):
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It would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to arrive at the claimed invention by selecting the compound of Example 14 of Golec et al., and then modifying said compound in view of its Formula I by replacing methyl with ethyl at R3, and then further substituting the carbon atom within the benzo-fused ring of isoindolinone moiety with bromine.
One would have been motivated to modify the compound of Example of Golec et al. by selecting ethyl in place of methyl at the R3 position, and then further substituting the benzo-fused ring of isoindolinone moiety with a bromine thereby arriving at the expanded compound species 3-(2-(6-bromo-1-oxoisoindolin-2-yl)butanamido)-5-fluoro-4-oxopentanoic acid. Golec et al. expressly teaches R3 of its formula I maybe C1-6 straight chain, including compound of Example 18 having methyl at R3 and compound of Example 21 having ethyl at R3, and identifies compound of Example 14 as a caspase inhibitor and as component of immunotherapy for treatment of cancer. Thus, Golec et al. itself would have suggested ethyl as an alternative to methyl at R3 while retaining the disclosed caspase inhibiting effect. With respect to the bromine substituent, Golec et al. expressly teaches the carbon with suitable valence in Ring A of its Formula I, including the fused ring, can independently be substituted with a halogen, such as Br. Accordingly, Golec et al. established that the carbon atom within the benzo-fused ring of isoindolinone moiety is amenable to substitution, and teaches halogen, including bromine, can be selected as the substituent.
One of ordinary skill in the art would have a reasonable expectation of success to arrive at the claimed invention, because Golec et al. demonstrates that methyl or ethyl at R3 of its formula I is tolerated, including exemplifying compounds of Example 18 and Example 21. Golec et al.’s suggestion of substituting the carbon with suitable valence in the fused ring of Ring A of its Formula I would have provided the skilled artisan with a reasonable expectation that substituting the benzo-fused ring of isoindolinone moiety with a bromine as the halogen as taught by Golec et al. could likewise be successful in arriving new compound of formula I while retaining the caspase inhibiting effect for the treatment of cancer.
Therefore, the claimed invention is prima facie obvious to one of ordinary skill in the art at the time the application was filed, absent factual evidence to the contrary.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Chihyi Lee whose telephone number is (571)270-0663. The examiner can normally be reached Monday - Friday 8:30 am - 5:00 pm EST.
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/CHIHYI LEE/Examiner, Art Unit 1628 /JEAN P CORNET/Primary Examiner, Art Unit 1628
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