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 .
No English Translation
Examiner notes that no certified translations of the Foreign Application CN202210234267.1 (filed March 10, 2022) or CN202210135494.9 (filed February 14, 2022) have been placed on record. If applicant wants the application to be accorded benefit of the non-English language application, a certified translation is required (see 35 U.S.C. 119(b)(3), 37 CFR 1.55(g)(1)-(4)). Applicant is advised that any showing of priority that relies on a non-English language application is prima facie insufficient if no certified translation of the application is on file.
Information Disclosure Statement
The information disclosure statement filed on November 14, 2024 has been considered except where lined through. Cite Nos. 1-3 have been uploaded as primarily blank documents.
Claim Objections
Claims 1-3, 5, 8 are objected to because of the following informalities:
Claim 1 recites “…ring A is selected from substituted or unsubstituted, saturated or unsaturated, N-containing cyclic, spiro or bridged C4-14 compounds containing…” (emphasis added) but should read as “…ring A is selected from substituted or unsubstituted, saturated or unsaturated, N-containing cyclic, spiro or bridged C4-14 heterocyclyl containing…” for clarity (see also instant spec. at p. 3).
Claim 2 recites “wherein R2 has the definition given in claim 1” and “R7 has the definition given in claim 1” which is unnecessarily redundant because the claim depends from claim 1.
Claims 2-3, 5 appear to be missing a final conjunction. Claim 2 states “…; R12 to R18 are each independently…” but should read “; and R12 to R18 are each”. Claim 3 states “; R7 is preferably hydrogen or fluorine” but should read “; and R7”. Claim 5 states “; R7 is preferably hydrogen or fluorine” but should read “; and R7”. The Examiner recognizes these omitted conjunction locations are also instances of indefinite language (see 35 USC 112 rejections below).
Claim 8 recites “the compound according to claim 1 a pharmaceutically acceptable” but should read as “the compound according to claim 1 or a pharmaceutically acceptable”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-5, 7-10 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.
Regarding claims 1, 4, the phrase "such as" (recited in multiple instances) renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 2-3, 5, 7-10 depend from claims 1 or 4 and do not, or do not fully, resolve these issues of indefiniteness and are thus included in instant rejection.
Regarding claims 1-5, the phrase "preferably" (recited in multiple instances) renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 7-10 depend from claim 1 and do not, or do not fully, resolve these issues of indefiniteness and are thus included in instant rejection.
Regarding claims 2-5, the phrase "especially" (recited in multiple instances) renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Further regarding claims 2-5, the recitation of limitations in parentheses can be ambiguous because it is unclear whether the limitations within the parentheses are part of the claimed invention, e.g. “(such as -F, -Cl, or -Br)”. Even with the removal of the problematic phrase “such as”, the limitation within the parentheses would still be ambiguous.
For the purposes of applying art, indefinite language limitations are interpreted as optional alternatives.
Regarding claim 1, Formula II includes the structural element “Ra” which is not defined in the claim. The metes and bounds of Formula II are thus unclear. For the purposes of applying art, Ra is understood to be selected from hydrogen, halogen, hydroxyl, C1-6 alkyl, C2-6 alkenyl, C2-6 alkynyl, C1-6 haloalkyl, hydroxyl-substituted C1-6 alkyl, carboxyl-substituted C1-6 alkyl, amino-substituted C1-6 alkyl, cyano-substituted C1-6 alkyl, nitro-substituted C1-6 alkyl, and C1-6 alkoxy (see instant spec. at p. 4 lines 1-5).
Regarding claim 4, claim 4 recites the limitation "R6 is selected from" on p. 8 lines 15-20. R6 is not part of claim 4’s Formula II-D or II-D0. It is unclear what the definition is referring to. For the purposes of applying art, the Examiner is disregarding the R6 limitation in claim 4, since based on claim 1, R6 is the R-substituted naphthalene.
Further regarding claim 4, Formula II-D or II-D0 include the structural element “R14” which is not defined in the claim. The metes and bounds of Formulas II-D and II-D0 are thus unclear. Claim 5 depends from claim 4 and does not fully resolve this issue of indefiniteness and is thus included in instant rejection. For the purposes of applying art, R14 in claims 4-5 (excluding Formula II-D and Formula II-D1) is understood to be selected from hydrogen, halogen, cyano, hydroxyl, amino, C1-6 alkyl, and C2-6 alkynyl (see instant spec. at p. 10 lines 14-15).
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by WO 2022135470 A1 to Tian et. al.1 as evidenced by the machine translation2.
Regarding instant claims 1, 6 and a compound of Formula II, WO’470 teaches compounds of instant Formula II including instantly claimed CAS Registry Nos. 2788896-04-6 (see WO’470 at p. 240, compare with instant claim 6 compound 17), 2788896-07-9 (see WO’470 at p. 240, compare with instant claim 6 compound 5), and 2788896-68-2 (see WO’470 at p. 242, compare with instant claim 6 compound 6).
Instant Formula II-D2
Instant Formula II-B
Instant Formula II-D0
PNG
media_image1.png
184
284
media_image1.png
Greyscale
PNG
media_image2.png
168
256
media_image2.png
Greyscale
PNG
media_image3.png
178
284
media_image3.png
Greyscale
CAS# 2788896-04-6
CAS# 2788896-07-9
CAS# 2788896-68-2
PNG
media_image4.png
318
312
media_image4.png
Greyscale
PNG
media_image5.png
272
340
media_image5.png
Greyscale
PNG
media_image6.png
320
308
media_image6.png
Greyscale
Regarding instant claim 2 and Formulas II-A, II-B0, and II-B, CAS# 2788896-07-9 reads on instant Formula II-B when R12 is chlorine, R2 and R13-R18 are H. CAS# 2788896-07-9 also appears to read on instant Formula II-B0. CAS# 2788896-04-6 and CAS# 2788896-68-2 appear to read on instant Formula II-A.
Regarding instant claim 4 and a compound of Formula II-D0, CAS# 2788896-68-2 reads on instant Formula II-D0 when L is -O(CH2)n- and n is 1, R1 is H, R2 and R3 are halogen specifically fluorine, R4 is H, R5 is fluorine, R7-R10 are H, R13-R18 are H, A is a substituted N-containing cyclic C4-14 group containing an additional N specifically piperazinyl, m is 1, Ra is a cyano-substituted C1-6 alkyl group specifically CH2CN. CAS# 2788896-07-9 and CAS# 2788896-04-6 also appear to read on instant Formula II-D0.
Regarding instant claim 5 and a compound of Formula II-D2, CAS# 2788896-04-6 reads on instant Formula II-D2 when R2 is H, R7 is H, R13-R18 are H. CAS# 2788896-07-9 and CAS# 2788896-68-2 also appear to read on instant Formula II-D2.
Regarding instant claim 7 and a composition, WO’470 teaches compositions comprising compounds of Formula I (see WO’470 at Abstract and WO’470T at Claims p. 19 claim 22). WO’470 teaches the composition may further comprise a pharmaceutically acceptable carrier (see WO’470T at Description p. 57 ¶[0162]).
Regarding instant claims 8-10 and a method of treating cancer, WO’470 teaches compounds of Formula I and compositions comprising compounds of Formula I for treating cancer mediated by KRAS G12C, HRAS G12C, or NRAS G12 mutations (see WO’470 at Abstract and WO’470T at Claims p. 19 claims 22-23). WO’470 teaches administering the compounds to a subject (see WO’470T at Description p.356 ¶1). WO’470 teaches the compounds are for treating cancers such as pancreatic cancer, lung cancer, and colorectal cancer mediated by G12C mutations (see WO’470T at Description p. 56 ¶2).
Claims 1-2, 4-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 113999226 A to Tian et. al.3 as evidenced by the machine translation.4
Regarding instant claims 1, 6 and a compound of Formula II, WO’470 teaches compounds of instant Formula II including instantly claimed CAS Registry Nos. 2788896-04-6 (see CN’226 at p. 27, compare with instant claim 6 compound 17), 2788896-07-9 (see CN’226 at p. 27, compare with instant claim 6 compound 5), and 2788896-68-2 (see CN’226 at p. 28, compare with instant claim 6 compound 6).
Instant Formula II-D2
Instant Formula II-B
Instant Formula II-D0
PNG
media_image1.png
184
284
media_image1.png
Greyscale
PNG
media_image2.png
168
256
media_image2.png
Greyscale
PNG
media_image3.png
178
284
media_image3.png
Greyscale
CAS# 2788896-04-6
CAS# 2788896-07-9
CAS# 2788896-68-2
PNG
media_image4.png
318
312
media_image4.png
Greyscale
PNG
media_image5.png
272
340
media_image5.png
Greyscale
PNG
media_image6.png
320
308
media_image6.png
Greyscale
Regarding instant claim 2 and Formulas II-A, II-B0, and II-B, CAS# 2788896-07-9 reads on instant Formula II-B when R12 is chlorine, R2 and R13-R18 are H. CAS# 2788896-07-9 also appears to read on instant Formula II-B0. CAS# 2788896-04-6 and CAS# 2788896-68-2 appear to read on instant Formula II-A.
Regarding instant claim 4 and a compound of Formula II-D0, CAS# 2788896-68-2 reads on instant Formula II-D0 when L is -O(CH2)n- and n is 1, R1 is H, R2 and R3 are halogen specifically fluorine, R4 is H, R5 is fluorine, R7-R10 are H, R13-R18 are H, A is a substituted N-containing cyclic C4-14 group containing an additional N specifically piperazinyl, m is 1, Ra is a cyano-substituted C1-6 alkyl group specifically CH2CN. CAS# 2788896-07-9 and CAS# 2788896-04-6 also appear to read on instant Formula II-D0.
Regarding instant claim 5 and a compound of Formula II-D2, CAS# 2788896-04-6 reads on instant Formula II-D2 when R2 is H, R7 is H, R13-R18 are H. CAS# 2788896-07-9 and CAS# 2788896-68-2 also appear to read on instant Formula II-D2.
Regarding instant claim 7 and a composition, CN’226 teaches compositions comprising compounds of Formula I (see CN’226 at Claims p. 19 claim 22). CN’226 teaches the composition may further comprise a pharmaceutically acceptable carrier (see CN’226T at Description p. 56 ¶[n0159]).
Regarding instant claims 8-10 and a method of treating cancer, CN’266 teaches compounds of Formula I for treating cancer mediated by KRAS G12C, HRAS G12C, or NRAS G12 mutations (see CN’226T at Claims p. 20 claim 23). CN’226 teaches administering the compounds to a subject (see CN’226T at Description p.306 ¶1). CN’226 teaches the compounds are for treating cancers such as pancreatic cancer, lung cancer, and colorectal cancer mediated by G12C mutations (see CN’226T at Description p. 55 ¶2).
Claims 1-2, 4, 7-10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by WO 2022061251 A1 to Zhang et. al.5
Regarding instant claim 1 and a compound of Formula II, Zhang teaches compounds of instant Formula II such as P-0493 (see Zhang at p. 313), P-0496 (see Zhang at p. 315), and P-0502 (see Zhang at p. 317), also known as CAS Registry Nos. 2765349-10-6, 2765349-13-9 and 2765349-19-5 respectively.
Instant Formula II
Instant Formula II-B
Instant Formula II-D0
PNG
media_image7.png
212
220
media_image7.png
Greyscale
PNG
media_image8.png
192
282
media_image8.png
Greyscale
PNG
media_image3.png
178
284
media_image3.png
Greyscale
Zhang P-0493
CAS# 2765349-10-6
Zhang P-0496
CAS# 2765349-13-9
Zhang P-0502
CAS# 2765349-19-5
PNG
media_image9.png
306
342
media_image9.png
Greyscale
PNG
media_image10.png
308
340
media_image10.png
Greyscale
PNG
media_image11.png
308
338
media_image11.png
Greyscale
CAS# 2765349-10-6 reads on instant Formula II when L is -O(CH2)n-, n is 1, R1-R2 are H, R3 is halogen specifically fluorine, R4-R5 are H, R6 is C6-C10aryl specifically naphthalene substituted with two substituents one being halogen specifically fluorine the other hydroxyl, R7 is halogen specifically fluorine, R8-R10 are H, A is a bridged heterocyclyl with two N, specifically
PNG
media_image12.png
92
68
media_image12.png
Greyscale
.
Regarding instant claim 2 and Formula II-B0, CAS# 2765349-10-6 also reads on instant Formula II-B0 when R2 is H, A is a bridged heterocyclyl with two N, specifically
PNG
media_image12.png
92
68
media_image12.png
Greyscale
, R12 is halogen specifically fluorine, R13 is H, R14 is hydroxyl, R15-R18 are H. CAS# 2765349-13-9 also reads on instant Formula II-B0.
Regarding instant claim 4 and Formulas II-D and II-D0, CAS# 2765349-19-5 reads on instant Formula II-D or II-D0 when R1-R2 are H, R3 is halogen specifically fluorine, R4-R5 are H, R7 is halogen specifically fluorine, R8-R10 are H, R13 is H, R15-R18 are H, and A is a bridged heterocyclyl with two N, specifically
PNG
media_image12.png
92
68
media_image12.png
Greyscale
.
Regarding instant claim 7 and a composition, Zhang teaches compositions comprising the disclosed compounds and a carrier (see Zhang claim 26).
Regarding instant claims 8-10 and a method of treating, Zhang teaches the disclosed compounds are inhibitors of KRAS mutants KRAS G12C, G12D, or G12V (see Zhang at p. 5 ¶[0012], see also Zhang Table 2 p.406 entry P-0502 corresponding with CAS# 2765349-19-5). Zhang teaches a method for treating a subject with a disease or condition mediated by KRAS comprising administering to a subject a compound (see Zhang at claim 28) wherein the disease may be a cancer such as lung cancer (see Zhang claims 29-30). Zhang teaches the phrase “KRAS mediated disease or condition” refers to a disease or condition in which the biological function of KRAS (e.g. G12C and/or KRAS G12D) affect the development and/or course of the disease or condition and/or in which modulation of KRAS alters the development, course and/or symptoms (see Zhang at p.18 ¶[0088]).
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.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang as applied to claims 1-2, 4, 7-10 above.
Regarding instant claim 3 and Formula II-C, Zhang also teaches P-0481, also known as CAS Registry No. 2757096-43-6 (see Zhang at p. 311), notably with an ethynyl substituent highlighted below (dashed circle).
Instant Formula II-C
Instant Formula II
Zhang ring (a)
PNG
media_image13.png
194
238
media_image13.png
Greyscale
PNG
media_image7.png
212
220
media_image7.png
Greyscale
PNG
media_image14.png
222
182
media_image14.png
Greyscale
Zhang P-0481
CAS# 2757096-43-6
Zhang P-0502
CAS# 2765349-19-5
Zhang Ring (u)
PNG
media_image15.png
310
336
media_image15.png
Greyscale
PNG
media_image11.png
308
338
media_image11.png
Greyscale
PNG
media_image16.png
232
206
media_image16.png
Greyscale
Zhang also teaches substitution of the R3 ring a or u, corresponding with instant R6 (see Zhang at claim 14 and 15), including at the R5 position, corresponding with instant R12. Zhang teaches R5 may be hydrogen, halogen (as in P-0502), or ethynyl (as in P-0481) (see Zhang claim 15)
The prior art differs from the instant claims as follows: while Zhang teaches ethynyl substituent at the instant R12 position as in instant Formula II-C (shown above in black dashed circle), Zhang does not teach an ethynyl substituent on a compound of instant Formula II (note above gray dashed box).
However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to arrive at the instantly claimed invention with a reasonable expectation of success in view of the prior art for at least the following reason(s):
Per MPEP § 2143(I)(B), a prima facie case of obviousness exists for simple substitution of one known element for another to obtain predictable results. It would have been obvious to an artisan to modify the substitution of a species taught by Zhang such as P-0502 (CAS# 2765349-19-5) to include an ethynyl substituent in lieu of the halogen substituent with a reasonable expectation of success because Zhang informs artisans a suitable alternative for the R5 halogen is ethynyl; Zhang further discloses fully defined species wherein R5 is ethynyl. Accordingly, an artisan would arrive at a species of instant Formula II-C.
Furthermore, it is well-within the ordinary skill in art to substitute one known substituent for another suitable alternative suggested by the prior art.
Therefore, an artisan would arrive at the same invention as presently claimed for reasons taught in the prior art.
Conclusion
Claims 1-3, 5, 8 are objected to.
Claims 1-10 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOPHIA J REILLY whose telephone number is (703)756-5669. The examiner can normally be reached 9:00 am - 5:00 pm EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KORTNEY KLINKEL can be reached at 571-270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SOPHIA REILLY/Examiner, Art Unit 1627
1 Cite No. 2 in the IDS filed 11/14/24. Filed December 22, 2021, published June 30, 2022. Hereinafter WO’470.
2 Machine Translation of WO 2022135470 A1, Translated by Patent Translate Espacenet.org on 8/27/26, 379 pages. Hereinafter WO’470T.
3 Cite No. 1 in the IDS filed 11/14/2024. Published February 1, 2022. Hereinafter CN’226.
4 Machine Translation of CN 113999226 A, Translated by Patent Translate Espacenet.org on 8/27/26, 328 pages. Hereinafter CN’226T.
5 Filed September 20, 2021 and published March 24, 2022. Hereinafter Zhang.
Prosecution Insights