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 .
Claims 1-18 are currently pending and are the subject of this Office Action.
Priority
The instant application claims priority as follows:
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Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The certified copy of foreign priority for CN202210063391.6 (received on 07/08/2024) contains the reaction schemes and compounds that are recited in the current claims.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/08/2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 18 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are drawn to “A use of the diastereomeric salt …”. In accordance with MPEP 2173.05(q): "Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 "). See also Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. V. Brenner, 255 F. Supp 131, 149 USPQ 475 (D.D.C. 1966).
Accordingly, claim 18 has not been examined.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 is missing some words and is redundant in the recitation of step (1) and (2). Appropriate correction is required.
Applicant should amend the following:
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to recite:
mixing a racemic compound of formula II with a resolving agent of formula IIIa or formula IIIb, performing a salt formation reaction, and separating to obtain a salt of formula IVa or formula IVc, respectively;
treating the salt of formula IVa or formula IVc obtained in step 1 with alkali base to obtain the compound of formula I;
wherein the reaction formula is as follows:
Claim 5, at the last line should recite “and combinations thereof”.
Claim 7 is missing “and” before “iii) reacting compound 3 with triethyl orthoformate…”. Claim 7 is also missing “wherein” before “the reaction formula is as follows”.
Claim 8 is missing “and” before “ammoniating the compound of formula I-1”.
Claim 8 is missing “wherein” before the reaction is as follows”.
Claim 9 is objected to for not claiming the formulae/compounds in the alternative. A "Markush" claim recites a list of alternatively useable members. See MPEP 2117.
Claim 14, at the last line should recite “and combinations thereof”.
Claim 17 is objected to for not claiming the formulae/compounds in the alternative. A "Markush" claim recites a list of alternatively useable members. See MPEP 2117.
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 1-9 and 11-17 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.
In claim 1, when referring to treating with alkali, is this alkali metal or alkali base? Alkali can mean two different things. The same can be said for claims 15-16. Applicant is requested to amend accordingly. In addition, claim 16 recites alkali treatment in the preamble, then alkaline treatment in (b), and alkali treatment in (c). Alkali is not the same as alkaline.
Claim 2 is ambiguous because it recites that Ar is formula V, and it can be substituted with a phenoxy group, however, Ar in claim 1 may not be substituted by a phenoxy group or aryloxy group.
Regarding claims 4 and 12 and 16, the phrases "preferably…” and “more preferably…” render the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). In addition, MPEP § 2173.05(c)states: “Use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible. Description of examples and preferences is properly set forth in the specification rather than in a single claim. A narrower range or preferred embodiment may also be set forth in another independent claim or in a dependent claim. If stated in a single claim, examples and preferences lead to confusion over the intended scope of the claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.”
Claim 8 is ambiguous because at step (s2) it recites using the compound of formula II as raw material, subjecting to resolution to prepare a compound of formula I, and it is followed by the narrower recitation of “wherein the method for preparing compound of formula I is as described in claim 1.” Maybe applicant means “converting the compound of formula II into a compound of formula I by the method of claim 1”.
Claim 9 is ambiguous for the recitation of “or a pharmaceutically acceptable salt thereof”. Claim 9 depicts the structures of four salt formulas and it is unclear what would be a pharmaceutically acceptable salt of the salts. Applicant should remove the phrase “or a pharmaceutically acceptable salt thereof”. The same can be said for claim 17.
Claim 11 is ambiguous because it recites that Ar is C5-C10 heteroaryl, however, the heteroaromatic that is Ar in claim 1 is a C6-C14 heteroaromatic.
Claim 12 recites the limitation "in organic solvent". There is insufficient antecedent basis for this limitation in the claim. Claim 12 depends of claim 1 and claim 1 does not recite the use of a solvent or organic solvent. An organic solvent is not an inherent feature of these claims.
Claim 16 recites the limitation "in the solvent". There is insufficient antecedent basis for this limitation in the claim. Claim 16 depends of claim 1 and claim 1 does not recite the use of a solvent. A solvent is not an inherent feature of these claims.
Claim 17 recites “any diastereomeric salts selected from the group consisting of Iva-1, Iva-2, IVc-1 to IVc-6”.Claim 17 is incomplete and its content is unclear. The claim may be referring to compounds listed in the specification, but the formulae is not recited in claim 35. See MPEP 2173.05 (s) for guidance. Claims must be complete in themselves and incorporation into claims by express reference to the specification is permitted only in exceptional circumstances (MPEP2173.05(s)). Ex parte Fressola, 27 USPQ 2d 1608 (1993). It is improper for claims to refer to subject matter not contained therein, even if the subject matter is contained in the specification. MPEP 2173.05(r).
Dependent claims are rejected for the same issues.
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 2 and 11 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.
Claim 2 recites that Ar is formula V, and it can be substituted with a phenoxy group, however, Ar in claim 1 may not be substituted by a phenoxy group or aryloxy group.
Claim 11 recites that Ar is C5-C10 heteroaryl, however, the heteroaromatic that is Ar in claim 1 is a C6-C14 heteroaromatic.
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 § 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.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (WO2019/223629- using English counterpart US 2021/0206760) in view of Barfacker et al. (US 2014/0100243).
Applicant claims a compound of formula
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, which is used as an intermediate in the production of finerenone.
Teachings of Barfacker
Barfacker et al. produced finerenone
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(Example 4 and claims 15-18) through the intermediate of formula:
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, in which the carboxy protecting group is 2-cyanoethyl. See Example 29A and general synthesis of the compounds at Scheme 8. The protecting group could be 2-cyanoethyl or allyl.
Teachings of Yang
Yang taught the synthesis of finerenone analogues of formula
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through a benzyl-protected intermediate of formula I-6
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. R0 represents the carboxyl protecting group. See paragraph [0200]
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Particularly, Examples 1-5, 7, 9 and 10 were prepared through the benzyl-protected intermediate.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The difference between the instant claims and the teachings of Barfacker et al. is only the protecting group used at the carboxyl group in the compounds of the art. The compounds in Barfacker use 2-cyanoethyl as protecting group while the instant claims use benzyl group as protecting group.
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vs.
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Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
One of ordinary skill in the art is a chemist practitioner with the knowledge and skill of the authors of the references cited to support the examiner's position. Yang teaches benzyl as carboxyl protecting group for the same compounds. A PHOSITA would accordingly recognize benzyl taught by Yang et al. as a suitable equivalent for 2-cyanoethyl taught by Barfacker et al., and it therefore would have been obvious to substitute 2-cyanoethyl group of Barfacker et al. with the art-recognized alternative carboxyl protecting group of Yang et al.
“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929). Accordingly, claim 10 is obvious.
The ordinary skilled artisan knew how to introduce benzyl on the relevant carboxyl group and how to remove it, as it was taught by Yang. The desire of scientists to improve upon what is already generally known would have provided the motivation to do this. In addition, the motivation derives from that the references are in the same field of endeavor for making the same or similar compounds, and that the claimed compound is used as intermediate, just like the compounds of the cited prior art. In view of the cited references, there would have been a reasonable expectation of success.
Under the Supreme Court rationales in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 82 USPQ2d 1385, 1395-97 (2007), here at least exemplary rationales (A) and (B) apply:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Conclusion
Claims 1-18 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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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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/VALERIE RODRIGUEZ-GARCIA/ Primary Examiner, Art Unit 1621
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