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 .
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, 10, 14, 16-17, 19, 22, 24, 26, 29-30, 33-34, 45, 47-48 and 55-56 are rejected under 35 U.S.C. 103 as being unpatentable over Bach et al. (WO 2017064217 A1).
Regarding claims 1, 10, 14, 16-17, 19, 22, 24, 26, 29-30, 33-34, 45, 47-48 and 55-56, Bach teaches a method for the treatment of disorders associated with cellular necroptosis, wherein cancer is a disorder of cellular necroptosis (relevant to claim 56), comprising administration of a composition of a compound of the general formula (I)
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or a pharmaceutically acceptable salt and/or solvate thereof, and at least one pharmaceutically acceptable excipient (relevant to claims 19 and 55) (abstract, Page 12 last para.). In terms of formula (I) Bach teaches R1 as H, C1-C6 alkyl (relevant to claim 45 and 47) or R1 forms together with R2 or R4 a heterocycloalkyl; R2-R6 are H, OH or OC1-C6 alkyl (relevant to claims 30 and 33); R7-R9 are H, halogen, aryl, heterocycle, heteroaryl, wherein the aryl and heterocycle is optionally substituted with OR36 and one or more C1-C6 alkyl (relevant to claims 14, 16-17, 22, 24, 26); R36 is selected from multiple embodiments which includes H (Page 3 lines 9-25).
In terms of claim 29, the claim merely limits Rz but does not recite embodiment Z is CRZ, thus the teaching of Bach reads to the claim.
In terms of claim 34, the claim merely limits Rw but does not recite embodiment W is CRw, thus the teaching of Bach reads to the claim.
In terms of claim 48, the claim merely limits R1a but does not recite embodiment R1 is substituted with R1a, thus the teaching of Bach reads to the claim.
From the teachings of Bach, it would have been obvious to someone of ordinary skill in the art at the time of filling to have constructed the claimed compound in claims 1 and 10 of claimed invention. One would have been motivated to do so from the above teachings of Bach wherein R7 and R9 is H and R8 is an aryl substituted with OH and two C1-C6 alkyls of methyl. There is a reasonable expectation of developing the claimed invention to treat cancer from the teachings of Bach.
Claims 1, 10, 14, 16-17, 19, 22, 24, 26, 29-30, 33-34, 40, 45, 47-48 and 55-56 are rejected under 35 U.S.C. 103 as being unpatentable over Bruce et al. (US Patent No. 20110218198).
Regarding claims 1, 10, 14, 16-17, 19, 22, 24, 26, 29-30, 33-34, 40, 45, 47-48 and 55-56, Bruce teaches a method for treating cancer comprising administration of formula (I)
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or a pharmaceutically acceptable salt thereof and a pharmaceutically acceptable excipient (relevant to claims 22, 24, 26, 40, 55-56) (abstract, para. 0044, 0139). In terms of formula (I) Bruce teaches R1 as H (relevant to claim 19); R2 is a halogen, C1-C10 alkyl (relevant to claims 45 and 47); R3 is H (relevant to claim 30 and 33); R4 is phenyl which is unsubstituted or mono-, di- or tri-substituted by C1-C10 alkyl and OH; X is NH, 0, S or SO2; R6 is H or C1-C10 alkyl (para. 0002-0018).
In terms of claim 29, the claim merely limits Rz but does not recite embodiment Z is CRZ, thus the teaching of Bruce reads to the claim.
In terms of claim 34, the claim merely limits Rw but does not recite embodiment W is CRw, thus the teaching of Bruce reads to the claim.
In terms of claim 48, the claim merely limits R1a but does not recite embodiment R1 is substituted with R1a, thus the teaching of Bruce reads to the claim.
From the teachings of Bruce, it would have been obvious to someone of ordinary skill in the art at the time of filling to have constructed the claimed compound in claims 1 and 10 of claimed invention. One would have been motivated to do so from the teachings of Bruce of formula (I) in which R4 is phenyl which is trisubstituted with Oh and two alkyls. The attached heteroaryl and R3 are positional isomers thus would possess similar properties of the claimed invention 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 is a reasonable expectation of developing the claimed invention to treat cancer from the teachings of Bruce.
Allowable Subject Matter
Claim 54 is 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.
Conclusion
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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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