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 .
Response to Arguments
Applicant’s arguments, see Page 1, filed 05/16/2026, with respect to the rejection(s) of claims 30-31, 33 and 35-37 under Hebert et al. Synthesis of Highly Functionalized Triarylbismuthines by Functional Group Manipulation and Use in Palladium- and Copper-Catalyzed Arylation Reactions, JOC, May 2016, Pages 5401-5416 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Applicants’ argument with respect to the 103 rejection of claims 1-2, 4, 6-7, 9, 12 and 16 over Zhang et al. (CN 113754591 A) is rendered moot to claims 1, 4, 6-7, 9, 12 and 16 and persuasive with respect to claim 2. Applicant argues claim 1 has been amended to not have a NH at position A1, nevertheless per claim 1 A1 can be NR4 wherein R4 can be H, thus NH can be an option for position A1.
Applicants’ argument with respect to the 103 rejection of claims 20-24 and 27-29 over Stansfield et al. (US 20200109129 A1) is rendered moot to claims 20, 22-24 and 27-29 and persuasive with respect to claim 21. The reasoning of A1 as stated above for the inclusion of NH.
Applicant has overcome the double patenting rejection of claims 1-2, 4-9, 12, 16 and 20-39 over U.S Patent No. 12145921 by the filing of a terminal disclaimer over U.S ‘921.
Applicant has amended claim 1. Claims 1-2, 4-9, 12, 16 and 20-39 are pending. Claims 1-2, 4-9, 12, 16 and 20-39 is now evaluated on its merits.
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.
Claims 1, 4, 6-7, 9, 12, 16, are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 113754591 A).
Regarding claims 1, 4, 6-7, 9, 12 and 16, Zhang teaches a method to treat or reduce tumor severity of diseases of inflammation, autoimmune, melanoma, multiple myeloma, skin T cell lymphoma, human erythrocyte leukemia, human chronic myelocytic leukemia, breast cancer, pancreatic cancer, gastric cancer, lung cancer, colorectal cancer, colon cancer and prostate cancer (relevant to claims 12 and 16) comprising administration of compound formula (I)
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87
187
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, in which R1 is hydrogen, R2 is six-membered aryl, para-substituted six-membered aryl, six-membered heteroaryl, para-substituted six-membered heteroaryl and X is structure
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66
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(page 2, para. 1). The compound is further represented by compound 10b
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(para. and compound 33
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(para. 0038). These structures read to limitations of claims 1, 4, 6-7 and 9 of A1 being NH (relevant to claim 2), A3 as N (relevant to claim 4), A5 as CH (relevant to claim 6), R1 as H and Cl (relevant to claim 7), R2 as substituted amine and R3 as COOH and COOCH2CH3 (relevant to claim 9).
Zhang et al. does not teach the positions of R1-R3 of the claimed invention represented in compounds 10b and 33.
Therefore, it would have been obvious to someone of ordinary skill in the art at the time of filing to have used the composition of 10b and 33 taught by Zhang to treat or reduce tumor severity of an inflammatory disease. One would have been motivated to do so because the positions of R1- R2 and Y of the above compound examples taught by Zhang et al. are position isomers in respect to R1-R3 of claimed compound, hence therefore would possess similar properties of the claimed compound as per MPEP 2144.09 (II): “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977)”. There would be a reasonable expectation of success with the positional isomer compounds taught by Zhang et al. having the similar structural properties of claimed compound to treat or reduce tumor severity of an inflammatory disease.
Claims 20, 22-24 and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Stansfield et al. (US 20200109129 A1).
Regarding claims 20, 22-24 and 27-29, Stansfield et al. teaches pharmaceutical compounds for therapy or prophylaxis in mammals for treatment of diseases such as cancer, inflammatory disorders, metabolic disorders and autoimmune disorders (relevant to claims 28-29) (abstract) exhibited by compound 84 (pg.276)
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which reads to the limitations of A1 as NH, A2 as N, A3 as N, A4 as CHCH3, A5 as N, and R3 as CON(CH3)2 (relevant to claims 20, 22-24 and 27).
Stansfield et al. does not teach the positions of A4-A5 and R3 of the claimed invention represented in compound 84.
Therefore, it would have been obvious to someone of ordinary skill in the art at the time of filing to have to have used the compound taught Stansfield et al. because the positions of A4, A5 and R3, on the compound taught by Stansfield et al. are of positional isomers to the claimed invention, hence therefore would possess similar properties of the claimed compound as per MPEP 2144.09 (II): “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977)”. There would be a reasonable expectation of the claimed compound and compound 84 have similar structural properties to treat an inflammatory disease.
Allowable Subject Matter
Claims 2, 5, 8, 21 and 25-26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 30-39 are free of the arts.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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MIKHAIL O'DONNEL. ROBINSON
Examiner
Art Unit 1627
/MIKHAIL O'DONNEL ROBINSON/Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
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