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 .
Status of the Claims
Claims 1-6 and 8-14 are pending. Claims 8-12 and 14 are withdrawn. Claims 1-6 and 13 are rejected.
Priority
This is a 35 U.S.C. 371 National Stage Filing of International Application No.
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, which claims priority under 35 U.S.C. 119(a-d) to
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. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d).
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted on 9/2/2024 and 7/10/2025 were considered by the Examiner.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1, 2, 5, and 13 and the species of compound 125:
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in the reply filed on 9/28/2026 is acknowledged. The traversal is on the ground(s) that the “claimed inventions form a single technical chain”, “Groups I and II are intermediate and final products that have unity of invention” and “Examiner’s a posteriori reasoning does not show that the shared special technical feature lacks a contribution over WO92/19211”. Upon further consideration, Examiner is combining Groups “I and II” and Groups “III and IV” into two distinct groups, instead of four.
Claims 1-6 and 13 embrace applicant’s elected species and are therefore under examination. The elected species and claim 13 are free of the prior art. As per MPEP 803.02, “Following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability.” The search was expanded to include the species rejected under 35 USC 102 and 103 below.
Claims 8-12 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/28/2026.
Claim Objections
Claim 3 is objected to because of the following informalities: Line 1 should read: “A fused quinonoxime imidazole derivative or a hydrochloride thereof,”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: Line 1 should read: “A fused quinonoxime imidazole derivative or the”. Appropriate correction is required.
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 1-6 and 13 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, p. 3, line 11 refers to “the substituents”, within the Ra, Rb, and Rc definition. It is unclear if such substituents refer to solely the Ra, Rb, and Rc substitutions or also to the group B substitutions. On p. 2, lines 13-14, the substituents for ring A, as well as in the R1-R4, are defined. The group B substituents on p. 2 are not explicitly defined and are currently open to the interpretation that substituents can be any chemical moiety. Examiner recommends clarifying this issue.
Claims 2, 5, and 13 are additionally rejected for depending from claim 1 and failing to remedy the deficiencies.
Claim 3, p. 5, line 10 refers to “the substituents”, within the Ra, Rb, and Rc definition. It is unclear if such substituents refer to solely the Ra, Rb, and Rc substitutions or also to the group B substitutions. On p. 4 of claim 3, the substituents for ring A, as well as in the R1-R4, are defined. The group B substituents on p. 4 are not explicitly defined and are currently open to the interpretation that substituents can be any chemical moiety. Examiner recommends clarifying this issue.
Claims 4 and 6 are additionally rejected for depending from claim 3 and failing to remedy the deficiencies.
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 and 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 following limitations which do not correctly depend from claim 1:
P. 3, lines 13-15 of claim 2 recite: “-O-lower linear/branched alkyl, -S-lower linear/branched alkyl, -acyl, and -acyl substituted by lower alkyl” describing R3 possibilities;
P. 4, line 1 recites: “-CN” and line 2 recites: “-CO2Ra” describing R4 possibilities.
The above limitations are not embraced by claim 1 definitions of either R3 nor R4.
Claim 4 recites the following limitations which do not correctly depend from claim 3:
P. 5, lines 12-14 of claim 4 recite: “-O-lower linear/branched alkyl, -S-lower linear/branched alkyl, -acyl, and -acyl substituted by lower alkyl” describing R3 possibilities;
P. 5, line 15 recites: “-CN” and line 16 recites: “-CO2Ra” describing R4 possibilities.
The above limitations are not embraced by claim 3 definitions of either R3 nor R4.
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 § 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.
Claim(s) 3, 4, and 6 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Koh et al. (WO92/19211).
Regarding instant claims 3, 4, and 6, Koh teaches the following fused quinonoxime imidazolium derivative on p. 36:
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, drawn to the following structure
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, which is embraced by a compound of instant Formula (III):
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, wherein A = benzene; R4 = lower alkyl substituted by:
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; R1 = methyl (lower alkyl); R3 = propyl (lower alkyl). Koh additionally teaches the following regarding solid compositions: “For preparing solid composition, the active compound is mixed with an excipient or a carrier such as magnesium stearate, dicalcium phosphate ….” (see p. 17, lines 3-7).
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.
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, 2 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koh et al. (WO92/19211), as applied above to claims 3, 4, and 6, in view of Paulekuhn et al. (J. Med. Chem. 2007, 50, 6665-6672).
Koh teaches the following fused quinonoxime imidazolium derivative on p. 36:
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, drawn to the following structure
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, which is similar to a compound of instant Formula (I):
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, wherein A = benzene; R4 = lower alkyl substituted by:
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; R1 = methyl (lower alkyl); R3 = propyl (lower alkyl). Koh additionally teaches the following regarding solid compositions: “For preparing solid composition, the active compound is mixed with an excipient or a carrier such as magnesium stearate, dicalcium phosphate ….” (see p. 17, lines 3-7). The prior art compound is not a salt (and no specific “X-“/anion) but the “core” structure shown supra is embraced by the instant fused quinonoxime imidazolium derivative.
Paulekuhn et al. teach that: “Salt formation is a well-known technique to modify and optimize the physical chemical properties of an ionizable research or development compound. Properties such as solubility, dissolution rate, hygroscopicity, stability, impurity profiles, and crystal habit can be influenced by using a variety of pharmaceutically acceptable counterions” (see p. 6665, left column). Table 6, truncated by the examiner for space, shows a wide variety of anions utilized in salt formation:
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, including halide ions and sulfate.
Regarding instant claims 1, 2, and 5, it would have been obvious to a PHOSITA to arrive at the instant claims, prior to the effective filing date. One of skill in the art would have been motivated to modify the compound of Koh with the teachings of Paulekuhn for the following reasons:
Properties of beneficial compounds can be enhanced by salt formation;
A wide variety of anions, including chloride and iodide, are known to form useful salts with improved properties such as solubility and stability (see Paulehun p. 6665, left column and Table 6).
A skilled artisan would have arrived at the instant claims in an effort to provide compounds with improved utility, with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Clark can be reached at 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGHAN C HEASLEY/Examiner, Art Unit 1626
/BRANDON J FETTEROLF/Primary Examiner, Art Unit 1626
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