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 .
Priority
This application was filed 047/10/2024 and is a 371 of PCT/EP2023/050753 (01/13/2023) which claims foreign priority to UK 2200463.4 (01/14/2022). Claims 1, 4, 7, 10, 14, 20-21, 27, 29-30, 32, 34, 39 42-43 and 46-50 are before the Examiner.
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.
Claim 7 is 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. Specifically, the definition of HET starting on page 2 of the claims has some structures not having a L2-R7 or L1-R6. This leaves the metes and bounds of claim 7 ambiguous. Clarification is required.
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)(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, 10, 14, 21, 27, 29-30, 34, 42-43 and 48-5 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by USPGPub20240425501 (effective date 10/21/2021). Sasmal teaches bicyclic heteroaryl derivatives as SOS1 KRAS inhibitors of formula (I) and specifically compound 87 (page 67) that anticipate the instant claims. Claim 1
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148
194
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. Claim 4 is anticipates=d by L1=L2=absent. Claim 10, 14 and 27 have R6 being heterocycle morpholine. Claim 21 and29 have R7 and R8 as H. Claim
30 has Ra absent. Claim 34 has structure #3. Claim 42 has R3=Me. Claim 43 has R1=Me and R2=H. Claims 48-50 are taught in the abstract. These claims are anticipated by Sasmal.
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.
Claims 20 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Sasmal US PGPub20240425501. Sasmal teaches a Markush that fully encompasses the instant compounds as well as compounds such as #87 page 67. Claims 20 and 32 have their limitations taught in formula (Ia) page 12 as well as pages 14 and 22. The difference between the compounds made by the prior art and the instant claims is that the specific compounds made by Sasmal does not have all the limitations on the compounds specifically made that are taught in the Markush. However, it would have been within the skill of the ordinary artisan to make a differently substituted compound within the Markush taught by Sasmal with the reasonable expectation of getting a compound having the same or similar activity. Rationale: The ability to make another compound within the bounds taught by Sasmal is within the skills of the ordinary artisan.
Claim Objections
Claims 46-47 are objected to because of the following informalities: These claims depend from rejected claims but would be allowable if rewritten in independent form with all the intervening limitations. Appropriate correction is required.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D MARGARET M SEAMAN whose telephone number is (571)272-0694. The examiner can normally be reached M-F 8am-4pm Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D MARGARET M SEAMAN/ Primary Examiner, Art Unit 1625
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