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 .
CONTINUING DATA
This application is a CON of 17/888,312 08/15/2022 PAT 12054511
17/888,312 is a CON of 16/623,263 12/16/2019 PAT 11414452
16/623,263 is a 371 of PCT/GB2018/051638 06/14/2018
FOREIGN APPLICATIONS
UNITED KINGDOM 1709471.5 06/14/2017
Claims 1-20 are pending.
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) 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Griffith (WO 2016/083830 A1) in view of Yuan (CN106478753A, March 8, 2018). Yuan (US 2018/0244710 A1) is used as an English equivalent.
Griffith teaches the synthesis of NUC-7738 from the phosphochloridate. See page 60. The reaction was done in anhydrous THF for 16 hours. Page 55. The compound is preferably the pure Rp or Sp diastereomer. Stereoisomers can be separated by conventional techniques such as preparative chromatography, enantiospecific synthesis or resolution, or resolved using a chiral HPLC column. Page 29. Preferably, free OH groups on the nucleoside are protected. Page 28. An exemplified protecting group was t-butyldimethylsilyl, which was removed in THF/water. Page 56. Another suitable solvent is isopropanol (paragraph bridging pages 27-28).
Griffith does not teach synthesis of NUC-7738 from Formula IIb, which contains a phenolic leaving group instead of chloride leaving group.
Yuan teaches that a prior art method for preparing NUC-1031 from the phosphochloridate results in a mixture of isomers. To solve this problem, Yuan prepared the following compound and separated the isomers by crystallization to use for preparation of a single diastereomer of NUC-1031. Pages 2-3.
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Yuan teaches the reaction of 61502b with the -C(O)O-tBu group-protected nucleoside 61501c as shown on page 4. The reaction was done in THF with t-butylmagnesium chloride at room temperature until the reaction was complete. Finally, the protecting group was removed.
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See pages 4-9.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to modify Griffith’s method to use Yaun’s compound 61502 instead of the phosphochloridate. The skilled artisan would have used compound 61502 so that the isomers could be separated before reaction with the compound of claimed Formula IIIb. It would have been obvious to use a protected nucleoside to avoid side reactions, and Griffith and Yuan illustrate exemplary protecting groups for nucleosides. Griffith teaches removal of the protecting group in THF/water and teaches that isopropanol is an alternative suitable solvent. It would have been obvious to carry out deprotection in IPA/water instead of THF/water because Griffith teaches that IPA is a suitable solvent. The skilled artisan would have carried out the reaction until it was complete as taught by Yuan, using Griffith’s time of 16 hours as a guide.
Claims 13-20 are not included in this rejection because neither Griffith nor Yuan teaches claimed step d). The prior art of record does not teach or suggest claimed step d).
Conclusion
Claims 1-12 are rejected. Claims 13-20 are objected to as depending from a rejected base claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAYLA D BERRY whose telephone number is (571)272-9572. The examiner can normally be reached 7:00-3:00 CST, M-F.
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/LAYLA D BERRY/Primary Examiner, Art Unit 1693
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