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
The examiner notes that there is no certified English translation of the foreign applications CN202210044016.7, CN202210399397.0, CN202211139978.7 and CN202310020643.1. If the applicant wants the application to be accorded benefit of the non-English language application, a certified translation is required.
The date 01/13/2023 was used for priority.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/12/2024, 01/29/2025, 04/08/2026, 05/11/2026 are being considered by the examiner.
Claim Interpretation
Claim 29 is a compound claim and thus is not limited by the intended use of that compound.
Claim Objections
Claim 22 is objected to because of the following informalities: the floating "Id" within the claim. 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 2, 5, 2641 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.
Claims 2, 5 and 26 are indefinite because of the word “comprising”. It would be unclear to one of ordinary skill in the art what the intended scope of a compound would comprise both because comprising is open ended and because the structures that the rings are supposed to comprise are completely different than what is initially indicated by ring A and ring C.
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Claim 41 is indefinite because of the it is unclear whether or not all the options: a method for inhibiting Src kinase, or preventing and/or treating a disease related to Src kinase, inhibiting tubulin, or preventing and/or treating a disease related to tubulin are all meant to read in the alternative or not. For example it is unclear if the claim is trying to claim a method for inhibiting Src kinase, or preventing and/or treating a disease related to Src kinase or inhibiting tubulin, or preventing and/or treating a disease related to tubulin. Or if the claim is requiring a method for inhibiting Src kinase, or preventing and/or treating a disease related to Src kinase and inhibiting tubulin, or preventing and/or treating a disease related to tubulin. For the purposes of examination the broadest reasonable interpretation was taken to mean that all options are in the alternative.
Additionally, claim 41 is indefinite because it list that the disease must be a skin disease but prior to requiring that the disease must be a skin disease the claim list several non-skin diseases (e.g. liver cancer, colon cancer, etc.). This is indefinite because it is unclear if the disease must be a skin disease or not. For the purposes of examination the broadest reasonable interpretation was used which is to assume all the diseases in the alternative.
Claim 41 recites the limitation "the tumor" in paragraph 2. There is insufficient antecedent basis for this limitation in the claim. There is no mention of a tumor prior to the mention of the tumor. Thus to what tumor is being referred to is indefinite.
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.
Claim 9 is 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 9 improperly broaden claim 1 from which it depends as it includes ring A that are carbocycles. 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 § 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, 5, 23, 25-26, 29, 33, 35 and 41 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by HANGAUER (HANGAUER et al., WO 2006071960 A2, 2006-07-06).
The reference HANGAUER teaches compound 38 (page 25), wherein R2=halogen, p=1, R1=H, n=1, W=O, L=C2 alkylene, V=absent, Q=ring A, which is unsubstituted.
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This anticipates claims 1-2, 5, 23, 25-26.
The reference HANGAUER teaches “As used herein, the term "effective amount" refers to an amount of a compound, or a combination of compounds, of the present invention effective when administered alone or in combination as an anti-proliferative agent. For example, an effective amount refers to an amount of the compound present in a formulation or on a medical device given to a recipient patient or subject sufficient to elicit biological activity, for example, anti-proliferative activity, such as e.g., anti-cancer activity or anti-neoplastic activity. The combination of compounds optionally is a synergistic combination. Synergy, as described, for example, by Chou and Talalay, Adv. Enzyme Regul. vol. 22, pp. 27-55 (1984), occurs when the effect of the compounds when administered in combination is greater than the additive effect of the compounds when administered alone as a single agent. In general, a synergistic effect is most clearly demonstrated at sub-optimal concentrations of the compounds. Synergy can be in terms of lower cytotoxicity, or increased antiproliferative effect, or some other beneficial effect of the combination compared with the individual components.
[] "A therapeutically effective amount" means the amount of a compound that, when administered to a mammal for treating a disease, is sufficient to effect such treatment for the disease. The "therapeutically effective amount" will vary depending on the compound, the disease and its severity and the age, weight, etc., of the mammal to be treated. A therapeutically effective amount of one or more of the compounds can be formulated with a pharmaceutically acceptable carrier for administration to a human or an animal. Accordingly, the compounds or the formulations can be administered, for example, via oral, parenteral, or topical routes, to provide an effective amount of the compound. In alternative embodiments, the compounds prepared in accordance with the present invention can be used to coat or impregnate a medical device, e.g., a stent”[000170-000171].
This anticipates claim 35.
The reference HANGAUER teaches “The compounds of the invention are useful in treating diseases and disorders that are modulated by tyrosine kinase inhibition. For example, the compounds of the invention are useful in treating diseases and disorders that are modulated by Src kinase”[0005] and “In another embodiment, prevention or treatment of the cell proliferation disorder, cancer or hyperproliferative disorder occurs through the inhibition of Src kinase or focal adhesion kinase (FAK). In another embodiment, the subject is a mammal. Preferably, the subject is human”[00078]. The reference teaches “The invention relates to a method of treating or preventing a disease or disorder that is modulated by tyrosine kinase inhibition, by administering a pharmaceutical composition that includes a compound according to Formula I or one of Formulae II-XIII, or a salt, solvate, hydrate, or prodrug thereof, and at least one pharmaceutically acceptable excipient. For example, the disease or disorder that is modulated by tyrosine kinase inhibition is cancer, pre-cancer, a hyperproliferative disorder, or a microbial infection. For example, the compound is a compound according to Formula I or II”[00068].
This anticipates claim 41 – especially in light of the above 112(b) rejection where it is unclear whether or not the disease to be treated is limited to a skin disease or not.
The reference HANGAUER teaches “The compounds of the present invention are useful as pharmaceutical agents. For example the compounds may be useful as antiproliferative agents, for treating mammals, such as for treating humans and animals. The compounds may be used without limitation, for example, as anti-cancer, anti-angiogenesis, anti-metastatic, anti-microbial, anti-bacterial, antifungal, anti-parasitic and/or anti-viral agents. The compounds of the invention are useful, for example, in treating lung cancer. The compounds of the invention are also useful, for example, in treating colon cancer. The compounds of the invention are also useful, for example, in treating breast cancer”[0004] and “As used herein, the term "cell proliferative disorder" refers to conditions in which the unregulated and/or abnormal growth of cells can lead to the development of an unwanted condition or disease, which can be cancerous or non-cancerous, for example a psoriatic condition. As used herein, the terms "psoriatic condition" or "psoriasis" refers to disorders involving keratinocyte hyperproliferation, inflammatory cell infiltration, and cytokine alteration”[000166].
This anticipates claim 41.
The reference HANGAUER teaches the following compound(page 105), wherein R1=F, n=1, W=O, L=C2 alkylene, V=absent, Q=ring A, which is unsubstituted, X=borate group.
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This anticipates claim 29.
The reference HANGAUER teaches “Synthesis of Compound 133. KX2-392:
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A 10 mL microwave reaction tube with septum closure was charged with 4-(2- (3-fluoro-4-(4,4,5,5-tetramethyl-l,3,2-dioxaborolan-2-yl)phenoxy)ethyl)mo[phi]holine (175 mg, 0.50 mmol), 2-(5-bromopyridin-2-yl)-N-(3-fluorobenzyl)acetamide (121 mg, 0.37 mmol), and FibreCat 1007 (30 mg, 0.03 mmol). Ethanol (3 mL) was added followed by aqueous potassium carbonate solution (0.600 mL, 1.0 M, 0.60 mmol). The tube was sealed and heated under microwave conditions at 150 [deg.]C for 10 minutes. The reaction was cooled, filtered, and concentrated to remove the majority of the ethanol. The residue was then taken up in 10 mL of ethyl acetate and washed successively with water and saturated sodium chloride solution. The organic layer was dried with MgSO4, filtered, and concentrated” [000356].
This anticipates claim 33.
Claim(s) 1-2, 5, 9 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by STN (STN, CAS Registry 1000668-60-9, 1/24/2008).
The reference STN 1000668-60-9 teaches the following compound, wherein R2=H, p=1, R1=F, n=1, W=O, L=C2 alkylene, V=absent, Q=ring A, m=1, R3=H.
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This anticipates claims 1-2, 5, 9.
Claim(s) 1-2, 5, 9, 19, 20-21, 24-26 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by STN (STN, CAS Registry 1000668-44-9, 24 Jan 2008).
The reference STN 1000668-44-9teaches the following compound, wherein R2=halogen, p=1, R1=ethyl, n=1, W=O, L=C2 alkylene, V=absent, Q=ring A, m=1, R3=H.
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This anticipates claims 1-2, 5, 9, 19, 20-21, 24-26.
Claim(s) 29 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by STN (STN, CAS Registry 107561-96-6, 11 Apr 1987).
The reference STN 107561-96-6 teaches the following compound, wherein R1=Cl, n=1, W=O, L=C2 alkylene, V=absent, Q=ring A, m=2, R3=methyl, X=Cl.
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This anticipates claim 29.
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.
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.
Claim(s) 1, 8, 10, 12, 16-17, 22, 27-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHEN (CHEN et al., CN113461665A, 2021-03-31, IDS) in view of Barillari (Barillari et al., Classical Bioisosteres, Bioisosteres in Medicinal Chemistry, First Edition. Edited by Nathan Brown 2012 Wiley-VCH Verlag GmbH & Co. KGaA. Published 2012 by Wiley-VCH Verlag GmbH & Co. KGaA, page 15-29)
The reference CHEN teaches the following lead compound(page 6), wherein R2=H, p=1, R1=H, n=1, W=O, L=C2 alkylene, V=absent, Q=ring A 7-membered heterocycle, m=1, R3=H.
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As well as the following compound (page 10), R2=H, p=1, R1=H, n=1, W=O, L=C2 alkylene, V=absent, Q=ring A 6-membered heterocycle, m=1, R3=H.
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This helps to teach claims 1, 8, 10, 12, 16-17, 22, 27-28.
The reference CHEN teaches “11.The diaryl derivative or a pharmaceutically acceptable salt thereof according to any one of claims 1 to 10, the structural formula is as follows:
12.The pharmaceutical composition is prepared by adding the diaryl derivative or a pharmaceutically acceptable salt thereof according to any one of claims 1 to 11 with pharmaceutically acceptable auxiliary components.
13.Use of the diaryl derivative according to any one of claims 1 to 11 or a pharmaceutically acceptable salt thereof or the pharmaceutical composition according to claim 12 in the preparation of a microtubule oligomerization inhibitor.
14.The use of the diaryl derivative according to any one of claims 1 to 11 or a pharmaceutically acceptable salt thereof or the pharmaceutical composition according to claim 12 in the preparation of a Src kinase inhibitor.
15.The diaryl derivative according to any one of claims 1 to 11 or a pharmaceutically acceptable salt thereof or the pharmaceutical composition according to claim 12 is used in the preparation of a medicament for the treatment of tumors, skin diseases and/or other diseases use.
16.The use according to claim 15, wherein the tumors include: solid tumors, sarcomas, blood system cancers, the subtypes are breast cancer, ovarian cancer, prostate cancer, cervical cancer, testicular cancer, colon cancer, colorectal cancer, liver cancer , Non-small cell lung cancer, squamous cell carcinoma, small cell lung cancer, gastric cancer, gastrointestinal stromal tumor, pancreatic cancer, bladder cancer, germ cell tumor, mastocytoma, mastocytosis, glioblastoma, nerve Blastoma, Astrocytoma, Melanoma, B-Cell Lymphoma, T-Cell Lymphoma, Slowly Progressing Lymphoma, Hodgkin’s Lymphoma, Non-Hodgkin’s Lymphoma, Acute Myeloid Leukemia, Acute Lymphocytic Leukemia, chronic myeloid leukemia, chronic lymphocytic leukemia, myeloma and/or myelodysplastic syndrome, etc.; the skin diseases include: actinic keratosis, psoriasis, atopic dermatitis, psoriasis, Vitiligo, roseola and/or systemic lupus erythematosus, etc.; the "other diseases" include but are not limited to the following: autoimmune diabetes, diabetic retinopathy, liver fibrosis, pulmonary fibrosis, renal fibrosis, Alzheimer's Zheimer's disease, Parkinson's disease, Huntington's disease, amyotrophic lateral sclerosis, spinocerebellar degeneration, atherosclerosis, anemia, sickle cell anemia, thalassemia, osteoarthritis, rheumatoid joints Inflammation, malaria, trypanosomiasis, helminthiasis, protozoan infection, multiple sclerosis, lupus, asthma, allergic rhinitis and/or inflammatory bowel disease, etc”(reference claims 11-16).
The CHEN does not teach the correct methyl groups of R1-R3 (claims 1, 8, 10, 12, 16-17, 22, 27-28).
The reference Barillari teaches “The discovery and development of a candidate for clinical evaluation is a long process that involves small modifications to a lead compound to improve some of its properties, such as pharmacological activity, selectivity, and pharmacokinetics. This is often achieved by the medicinal chemists by replacing a functional group with groups sharing similar physical or chemical properties and maintaining similar activity, which are defined as bioisosteres. We will hereby provide a historical overview of the development and evolution of the concepts of isosterism and bioisosterism, followed by a selection of successful examples of bioisosteric modifications reported in the literature”(page 15).
The reference Barillari teaches(page 17):
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This helps to teach claims 1, 8, 10, 12, 16-17, 22, 27-28.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have modified CHEN with Barillari to produce compounds of the instant claims because CHEN teaches lead compounds that only differ from the instant compounds by 1 or 2 methyl groups replacing hydrogens and Barillari teaches that discovery and development of a candidate for clinical evaluation is a long process that involves small modifications to a lead compound to improve some of its properties, such as pharmacological activity, selectivity, and pharmacokinetics. One would have a reasonable expectation of success in replacing H with methyl groups because this is a classical bioisotere for monovalent atom replacement and because it is a small change in the structure. One would have motivation to do so to possibly improve some of its properties, such as pharmacological activity, selectivity, and pharmacokinetics for the preparation of a medicament for the treatment of tumors, skin diseases. Further, it is generally noted that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Druey, 319 F.2d 237, 138 U.S.P.Q. 39 (C.C. P.A. 1963). It is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to substitute the H group for a Me. 2144.08(II)(A)(4)(c).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-2, 5, 9-10, 19-21, 23-28, 35 and 41 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-20 of copending Application No. 19/500,628 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The application ‘628 claims:
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This anticipates claims 1-2, 5, 9-10, 19-21, 23-28, 35 and 41.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Claims 1-2, 5, 8-10, 12, 16-17, 19-29, 33, 35 and 41 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISON AZAR HASTINGS whose telephone number is (703)756-4584. The examiner can normally be reached Mon-Thurs 7:30am-5pm EST Friday 7:30-4pm EST (every other Friday off).
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/A.A.H./ Examiner, Art Unit 1627
/Kortney L. Klinkel/ Supervisory Patent Examiner, Art Unit 1627
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