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 .
Election/Restrictions
Applicant’s election with traverse of Group I (claims 1 – 13, and 15 – 16) drawn to a compound represented by formula (I’), a racemate, a stereoisomer, a tautomer, a nitrogen oxide or a pharmaceutically acceptable salt thereof:
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wherein R1-6, Cy1, Cy2, Cy3, and L are defined in the reply filed on August, 13th, 2026 is acknowledged.
Applicant’s election with traverse of the species (“(2R,4S)-N-((2S)-1-((2-amino-6,7-dihydro-5H-cyclopenta[b]pyridine-5-yl)amino)-1-oxopropan-2-yl)-4-(4-fluorobenzyl)pyrrolidine-2-carboxamide”) of structure
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in the reply filed on August, 13th, 2026 is also acknowledged.
Claims 14, and 17 – 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II (a preparation for the compound of formula (I’)) and Group III (a method for preventing and/or treating a disease associated with the lectin pathway of complement), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August, 13th, 2026.
However, upon the initial search the elected specie
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was found to be free of the prior art; therefore, the search was expanded, and all non-elected species were rejoined. Thus the election of species required in the Restriction Requirement mailed June 24th, 2026 is withdrawn; but the restriction between Groups I, Group II, and Group III is maintained.
Hence claims 1 – 13, and 15 – 16 are being examined on the merits.
Response to Arguments
Applicant's arguments filed August 13th, 2026 have been fully considered but they are not persuasive.
Applicant argues that claim 1 has been amended to require X to be N which distinguishes species of the examined application from the prior art compound 91 of Baly’355. See Applicant’s arguments page 50 paragraph 3. Moreover, Applicant argues that as a consequence the general formula (I’) possess a shared specific technical feature. See Applicant’s arguments page 50 paragraph 3.
The examiner contends that as reflected in the prior art rejection below there is still lack of unity between the Groups I, Group II, and Group III in view of Baly’355 in further view of Ali et. al. Thus the requirement for restriction is maintained, deemed proper, and is made final.
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 – 13, and 15 – 16 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.
Claim 1 recites the limitation where, “Cy1 is selected from the following groups unsubstituted or optionally substituted with 1, 2, 3, or 4 R7: 5- to 8-membered heterocyclyl and 5- to 6-membered heteroaryl; each R7 is identical or different and is each independently selected from H, oxo (=O), halogen, and C1-6 alkyl;” however, the recitation for Cy1 is indefinite because there is uncertainty about whether the R7 recitation of 5- to 8-membered heterocyclyl and 5- to 6-membered heteroaryl are options for what Cy1 can be or whether the R7 recitation is the substituents on Cy1. As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of the structure of Cy1. Therefore, given the uncertainty around the structure of Cy1 is recited claim 1; claim1 is rejected under 35 U.S.C. 112(b). Moreover, claims 2 – 13, and 15 – 16 are included in the rejection since the claims dependent from claim 1 but do not address the deficiency. For the sake of compact prosecution the limitation of 5- to 8-membered heterocyclyl and 5- to 6-membered heteroaryl is used to define Cy1 with the recitation of R7 = H, oxo (=O), halogen, and C1-6 alkyl referring to the substituents.
Claim 1 recites the limitation where, “Cy2 is selected from the following groups unsubstituted or optionally substituted with 1, 2, 3, or 4 R8: C6-10 aryl, 5- to 10-membered heteroaryl, C3-10 cycloalkyl, and 5- to 12-membered heterocyclyl; each R8 is identical or different and is each independently selected from -CN, halogen, C1-6 alkyl, C1-6 alkoxy, C1-6 haloalkyl, C1-6 haloalkoxy, C3-10 cycloalkyl, C6-10 aryl, and 5- to 10-membered heteroaryl;” however, the recitation for Cy2 is indefinite because there is uncertainty about whether the R8 recitation of C6-10 aryl, 5- to 10-membered heteroaryl, C3-10 cycloalkyl, and 5- to 12-membered heterocyclyl are options for what Cy2 can be or whether the R8 recitation is the substituents on Cy2. As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of the structure of Cy2. Therefore, given the uncertainty around the structure of Cy2 is recited claim 1; claim 1 is rejected under 35 U.S.C. 112(b). Moreover, claims 2 – 13, and 15 – 16 are included in the rejection since the claims dependent from claim 1 but do not address the deficiency. For the sake of compact prosecution the limitation of C6-10 aryl, 5- to 10-membered heteroaryl, C3-10 cycloalkyl, and 5- to 12-membered heterocyclyl is used to define Cy2 with the recitation of R8 = from -CN, halogen, C1-6 alkyl, C1-6 alkoxy, C1-6 haloalkyl, C1-6 haloalkoxy, C3-10 cycloalkyl, C6-10 aryl, and 5- to 10-membered heteroaryl referring to the substituents.
Regarding claim 4, the phrase "preferably" on page 6 line 6 and page 7 line 9 of the claim renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of where the limitation after the “preferably,” is required or not. Therefore, given the uncertainty around the limitations after the “preferably,” claim 4 is rejected under 35 U.S.C. 112(b).
Regarding claim 5, the phrase "preferably" on page 9 lines 3 and 6 of the claim renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of where the limitation after the “preferably,” is required or not. Therefore, given the uncertainty around the limitations after the “preferably,” claim 5 is rejected under 35 U.S.C. 112(b).
Regarding claim 6, the phrase "preferably" on page 10 line 6 of the claim renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of where the limitation after the “preferably,” is required or not. Therefore, given the uncertainty around the limitations after the “preferably,” claim 6 is rejected under 35 U.S.C. 112(b).
Regarding claim 8, the phrase "preferably" on page 11 lines 8 and 11 of the claim renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of where the limitation after the “preferably,” is required or not. Therefore, given the uncertainty around the limitations after the “preferably,” claim 8 is rejected under 35 U.S.C. 112(b).
Regarding claim 9, the phrase "preferably" on page 12 line 2 of the claim renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of where the limitation after the “preferably,” is required or not. Therefore, given the uncertainty around the limitations after the “preferably,” claim 9 is rejected under 35 U.S.C. 112(b).
Regarding claim 10, the phrase "preferably" on page 12 lines 9 and 13 of the claim renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of where the limitation after the “preferably,” is required or not. Therefore, given the uncertainty around the limitations after the “preferably,” claim 10 is rejected under 35 U.S.C. 112(b).
Regarding claim 11, the phrase "preferably" on page 13 lines 9 and 14 of the claim renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of where the limitation after the “preferably,” is required or not. Therefore, given the uncertainty around the limitations after the “preferably,” claim 11 is rejected under 35 U.S.C. 112(b).
Regarding claim 12, the phrase "preferably" on page 15 line 24, page 16 line 14, and page 17 lines 2 – 3, 7, and 12, of the claim renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of where the limitation after the “preferably,” is required or not. Therefore, given the uncertainty around the limitations after the “preferably,” claim 12 is rejected under 35 U.S.C. 112(b).
Regarding claim 13, the phrase "preferably" on page 29 line 5 of the claim renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of where the limitation after the “preferably,” is required or not. Therefore, given the uncertainty around the limitations after the “preferably,” claim 13 is rejected under 35 U.S.C. 112(b).
Regarding claim 15, the phrase "preferably" on page 44 line 6 of the claim renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). As a consequence, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically one of ordinary skill in the art would not be reasonably apprised of where the limitation after the “preferably,” is required or not. Therefore, given the uncertainty around the limitations after the “preferably,” claim 15 is rejected under 35 U.S.C. 112(b).
Claim Rejections - 35 USC § 112
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 – 4 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 the compound of formula (I’) according to claim 1 where X is selected from CR4 and N. However, independent claim 1 has been amended to require X to be N. Thus the limitation of dependent claim 2 is broader then the limitation in claim 1 which dependent claim 2 depends. As a consequence dependent claim 2 does not further limit independent claim 1 and is rejected under 35 U.S.C. 112(d). Moreover, claims 3 – 4 are included in the rejection since the claims are dependent from claim 2 but do not address the deficiency. 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 7 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 7 recites the compound of formula (I’) according to claim 1 where X is selected from CR4 and N. However, independent claim 1 has been amended to require X to be N. Thus the limitation of dependent claim 2 is broader then the limitation in claim 1 which dependent claim 7 depends. As a consequence dependent claim 7 does not further limit independent claim 1 and is rejected under 35 U.S.C. 112(d). 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
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.
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.
Claims 1 – 2, 5 – 12, and 15 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over International Publication Number WO 2005/040355 A2 to Baly et. al. (Baly’355; cited on the ISR form) in view of Patani et. al. ((1996),Bioisosterism A rational approach in drug design, Chem. Rev., 96, 3147-3176).
Regarding claims 1 – 2, 5 – 12, and 15 – 16, Baly’355 teach compounds for modulating protein kinase enzymatic activity for modulating cellular activities such as proliferation, differentiation, programmed cell death, migration and chemoinvasion. See page 1 paragraph 0002. Moreover, Baly’355 teach a compound for modulating kinase activity according to Formula I,
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. See page 5 paragraph 0021. Specifically, Baly’355 teach species compound 91 of structure
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where examined Cy3 =
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; examined Y = -CH2-; examined Z = CH where examined R2 = H; examined X = CH where examined R4 = H; examined R = H; examined m = 2; examined R1 = R3 = H; examined Cy1 =
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; examined L = a bond where examined q = 0; examined R5 = R5’ = R6 = H; and examined Cy2 = phenyl. See page 30 Table 1 Entry 91. See claim 1 limitation for a compound represented by formula (I’), a racemate, a stereoisomer, a tautomer, a nitrogen oxide or a pharmaceutically acceptable salt thereof:
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where Cy3 is
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; Y = -CH2-; Z = CR2 where R2 = H; R = H; m = 2; R1 = R3 = H; Cy1 = R7 = 6 membered heterocyclyl; L = -(CRaRb)q- where q = 0; R5 = R5’ = R6 = H; and Cy2 = R8 = C6 aryl. See claim 2 limitation for the compound of formula (I’) according to claim 1 where the compound is represented by formula (I’) has the structure represented by the following (I):
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where X = CR4 where R4 = H; Y = -CH2-; Z = CR2 where R2 = H; R = H; m = 2; R1 = R3 = H; Cy1 = R7 = 6 membered heterocyclyl; L = -(CRaRb)q- where q = 0; R5 = R6 = H; and Cy2 = R8 = C6 aryl. See claim 6 limitation for the compound of formula (I’) according to claim 1 where R5 = R5’ = H. See claim 7 limitation for the compound of formula (I’)according to claim 1 where R1 = R2 = R3 = H; X = CR4 where R4 = H; and Y = -CH2-. See claim 8 limitation for the compound of formula (I’)according to claim 1 where R6 = H. See claim 9 limitation for the compound of formula (I’)according to claim 1 where L = absent. See claim 10 limitation for the compound of formula (I’)according to claim 1 where the selected Cy1 = piperazinyl. See claim 11 limitation for the compound of formula (I’)according to claim 1 where the selected Cy2 = C6 aryl.
Moreover, Baly’355 teach pharmaceutical compositions comprising compounds of the disclosure, which include compound 91, and a pharmaceutically acceptable carrier. See page 32 paragraph 0045. See claim 16 limitation for a pharmaceutical composition, comprising a therapeutically effective amount of at least one of the compounds, the racemates, the stereoisomers, the tautomers, the nitrogen oxides or the pharmaceutically acceptable salts thereof according to claim 1.
However, Baly’355 fails to teach a compound of formula (I’):
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where X = N. See claims 1, 5, 12, and 15 limitations.
Nevertheless, Patani et. al. teach that the concept of bioisosterism represents one approach used by the medicinal chemist for the rational modification of lead compounds into safer and more clinically effective agents. See page 3147 column 1 paragraph 1 and column 2 paragraph 1. Furthermore, Patani et. al. teach the ability of a group of bioisosteres to elicit similar biological activity has been attributed to common physicochemical properties. See page 3148 column 1 paragraph 2. Moreover, Patani et. al. teach that bioisosteres have been classified as either classical or nonclassical with classical bioisosteres have been traditionally divided into several distinct categories: (A) monovalent atoms or groups; (B) divalent atoms or groups; (C) trivalent atoms or groups; (D) tetrasubstituted atoms; and (E) ring equivalents. See page 3148 column 2 paragraph 4 and page 3149 column 1 paragraph 1. Specifically, Patani et. al. teach the trivalent substitution of -CH= with -N= is commonly used in modern drug design. See page 3159 column 2 paragraph 4. Moreover, Patani et. al. teach an example where a trivalent ring substitution of -CH= with -N= in the antibacterial agent norfloxacin (56a) resulted in enoxacin (56b, Figure 38) which is also in clinical use for its antibacterial activity. See page 3159 column 2 paragraph 4.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to modify prior art compound 91 of Baly’355 in view of Patani et. al. that is to have a trivalent ring substitution of X from -CH= to -N=. One of ordinary skill in the art would have been motivated to make this modification to rationally modify compound 91 safer and more clinically effective agent. One of ordinary skill in the art would have had a reasonable expectation of success because the trivalent substitution of -CH= with -N= is commonly used in modern drug design. Moreover, in the prior art example where a trivalent ring substitution of -CH= with -N= in the antibacterial agent the bioisostere was also exhibited favorable biological affect.
Conclusion
Claims 1 – 13, and 15 – 16 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAWANNA S WHITE whose telephone number is (703)756-4687. The examiner can normally be reached 7:00 am - 5:00 pm [EST] M - Th.
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/DAWANNA SHAR-DAY WHITE/Examiner, Art Unit 1627
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