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 Claims
Claims 1-20 are pending in the instant application.
Priority
Acknowledgement is made of Applicant’s claim for foreign priority based on the CN202210245736.X and CN202210557410.0 applications filed in the People’s Republic of China on March 10th, 2022 and May 22nd, 2022, respectively.
Information Disclosure Statement
The Information Disclosure Statements filed on September 10th, 2024 and March 19th, 2026 have been fully considered by the examiner except where marked with a strikethrough.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any of the errors of which Applicant may become aware of in the specification.
Drawings
The drawings are objected to because the axes labels in Figures 1-3 are illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-9 and 11-20 are objected to because of the following informalities:
Per MPEP 608.01(m), “Each claim begins with a capital letter and ends with a period.” Several claims contain capital letters that are improper. In Claim 1, “Where”, “Each”, “Moreover”, and “Hydrogen” are improperly capitalized. In Claim 2, “In” and “Halogens” are improperly capitalized. In Claim 3, “And” is improperly capitalized. In Claim 4, “Hydrogen” and “Each” are improperly capitalized. In Claim 5, “Hydrogen” and “Each” are improperly capitalized. In Claim 6, “The” is improperly capitalized. In Claim 7, “Where” is improperly capitalized. In Claim 8, “Hydrogen” is improperly capitalized. In Claim 9, “And” is improperly capitalized. In Claim 11, “Each” is improperly capitalized. In Claim 12, “Each” is improperly capitalized. In Claim 13, “Halogen” is improperly capitalized. In Claim 14, “And”, “In”, and “Another” are improperly capitalized. In Claim 15, “Preferably” is improperly capitalized. In Claim 16, “Preferably” is improperly capitalized. In Claim 17, “Substance” and “The” are improperly capitalized. In Claim 18, “The” is improperly capitalized. In Claim 19, “Prevention” is improperly capitalized. In Claim 20, “The” and “Hexamethyldisilylamine” are improperly capitalized.
Claim 1 recites definitions for variables “R2”, “R8”, and “R9”. In the structure of formula (I’), these variables are recited as “R2”, “R8”, and “R9”. This should be corrected such that the variable definitions match the variables illustrated in the structure.
Claim 5 erroneously recites the symbols “
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” and “
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” in Option 2. These symbols are not defined.
In Claim 6, the structures of I-1, I-5, I-10, I-14, I-24, and I-26 are incomplete.
In Claim 6, the character
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erroneously appears in structure I-22.
Claim 8 erroneously uses the character ” ~” in place of a hyphen (“-“) in the definition of R8-1.
Claim 13 erroneously uses the character “~” in place of a hyphen (“-“) in the definitions of R8-1, R8-2, R8-3, and R8-4.
Claim 13 erroneously uses the character “~” in place of a hyphen (“-“) in the definitions of R10 in method 5.
Claim 20 erroneously recites “K is or CH2”. The Examiner has interpreted this to mean “K is CH2”.
Per MPEP 608.01(m), “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.” Claims 1-5, 7-9, 11, 13-16, 18, and 20 each contain periods prior to the end of the claim.
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 1-20 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 1-20, the recitation of “derivative” renders the claims indefinite. A person having ordinary skill in the art would reasonably interpret “derivative” to include any number of compounds distinct from those defined, for example, by formula (I’) obtained from further modifications of the structures described thereof. To overcome this rejection, the examiner suggests removing the limitation “derivative”. For example, Claim 1 could read “A triazine of formula (I’) or a pharmaceutically acceptable salt thereof…”
Regarding Claims 1 and 12, the limitation “replaced by 1, 2, or 3 tritium” as recited, for example in Claim 1 “R2 is a methyl group, or a methyl group replaced by 1, 2, or 3 tritium” renders the claims indefinite. R2, for example, is bound by a single bond to a nitrogen on the core structure of formula (I’). It is, therefore, not possible for 2 or 3 tritium to replace the recited methyl group thereof.
Regarding claims 2, 8, and 20, the phrase "e.g." 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).
Claim 3 recites the limitation "R2 is methyl or -CD3" in condition 1 and “R7 is methyl or -CD3” in condition 2. There is insufficient antecedent basis for this limitation in the claim, as Claim 1, from which Claim 3 depends defines R2 and R7 as a methyl group or a methyl group replaced by 1, 2, or 3 tritium. Therefore, this limitation does not allow R2 or R7 to be defined as -CD3.
Claim 4 recites the limitation "A triazine derivative or a pharmaceutically acceptable salt thereof as indicated in formula (I) of claim 1". There is insufficient antecedent basis for this limitation in the claim, as Claim 1 recites a compound of formula (I’), but not formula (I).
Regarding claim 5, the phrase "better" 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).
Claim 5 recites the limitation "R7 is methyl or -CD3" and “R2 is -CD3” in Option 2. Further, Option 3 recites “R3 is tritium; R4 is tritium”. Further, Option 4 recites the limitations “R5 is tritium; R6 is tritium”. Option 5 recites the limitations “R2 is methyl or -CD3” and “R7 is -CD3”. Further, Option 6 recites the limitations “R2 is methyl or -CD3” and “R7 is methyl or -CD3”. There is insufficient antecedent basis for these limitations in the claim, as Claim 1, from which Claim 5 depends, does not allow R2 or R7 to be defined as -CD3, and does not allow R3, R4, R5 or R6 to be defined as tritium.
Claim 6 recites the limitation "The triazine derivatives shown are any of the following compounds …
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". There is insufficient antecedent basis for this limitation in the claim, as compounds I-2, I-8, I-13, I-14, I-19, I-24, I-26, I-27, I-28, I-29 require R2 to be defined as -CD3. Compounds I-11, I-17, I-24, and I-25 require R7 to be defined as -CD3. Claim 1, from which Claim 6 depends, recites that R2 and R7 are each “a methyl group, or a methyl group replaced by 1, 2 or 3 tritium” and does not allow R2 or R7 to be defined as -CD3.
Claim 7 recites the limitations "R2 is a methyl group or a methyl group replaced by 1, 2 or 3 deuterium" and R7 is a methyl group or a methyl group replaced by 1, 2 or 3 deuterium. There is insufficient antecedent basis for this limitation in the claim, as Claim 1, from which Claim 7 depends recites that R2 and R7 are each “a methyl group, or a methyl group replaced by 1, 2 or 3 tritium” and does not allow R2 or R7 to be defined as -a methyl group substituted with deuterium. Dependent Claims 9-10 do not correct this lack of antecedent basis, and therefore are also included in this rejection.
Claim 8 recites the limitations "formula (I’)" and “formula (D)”. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "formula (I’)". There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "R1 is tritium" in Option 1, “R3 is tritium, R4 is tritium” in Option 3, “R5 is tritium, R6 is tritium” in Option 4. There is insufficient antecedent basis for this limitation in the claim, as Claim 7, from which Claim 11 depends, does not recite tritium as an option for the variables R1, R3, R4, R5, and R6.
Regarding Claim 12, the phrase “6-10 meta heteroaryl group that is not replaced” renders the claim indefinite. No definition is provided for “meta heteroaryl group” such that a person having ordinary skill in the art would readily ascertain the moieties encompassed by this classification. In the interest of compact prosecution, the Examiner has interpreted this to mean “6-10 membered heteroaryl group.”
Claim 12 recites the limitation "formula VI". There is insufficient antecedent basis for this limitation in the claim.
Regarding claims 2, 8, 13, 15-16, 18, and 20 the phrase "preferably" 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).
Regarding claims 1 and 13, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 13, the recitation of the limitation “the halogen is atmosphere” renders the claim indefinite, as a person having ordinary skill in the art would not recognize “atmosphere” as a halogen. Clarification is required.
Claim 13 recites the limitation "Formula (T’)". There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "In a better way, R10 is …
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… Another example
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". There is insufficient antecedent basis for this limitation in the claim, as this is preceded by “R10 the 6-10 meta heteroaryl group is,
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Z1 is N or O; Z2 is N or C; Z3 is C or O.” The moieties noted above do not read on this formula. Additionally, Claim 14 recites the limitation “R2 is methyl or -CD3”. There is insufficient antecedent basis for this limitation in the claim because Claim 12, from which Claim 14 depends recites “R2 is a methyl group or a methyl group replaced by 1, 2, or 3 tritium” and does not allow R2 to be defined as -CD3.
Regarding claim 14, the phrases "In a better way" and “Another example” 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).
Claim 14 recites the limitation "Formula (I’)". There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the binary eutectic is
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". There is insufficient antecedent basis for this limitation in the claim, as Claim 1, from which Claim 15 depends recites that R2 is “a methyl group, or a methyl group replaced by 1, 2 or 3 tritium” and does not allow R2 be defined as -a methyl group substituted with deuterium, as required by the compounds noted above.
Claim 16 recites the limitation "the ternary eutectic is
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". There is insufficient antecedent basis for this limitation in the claim, as Claim 1, from which Claim 16 depends recites that R2 is “a methyl group, or a methyl group replaced by 1, 2 or 3 tritium” and does not allow R2 be defined as -a methyl group substituted with deuterium, as required by the compound noted above.
Claims 17-18 recite the limitation "Formula I". There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "a triazine derivative or a pharmaceutically acceptable salt thereof as described in formula I of claim 1" in Lines 2-3 of the claim. There is insufficient antecedent basis for this limitation in the claim, as Claim 1 does not recite a compound of formula I. Claim 1 recites instead a compound of formula I’.
Claims 18-19 are drawn to a “use” or “application” of a compound or pharmaceutically acceptable salt thereof without positively reciting any steps to the process thereof. Per MPEP 2173.05(q), “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pe-AIA 35 U.S.C. 112, second paragraph.”
Claim 19 recites the limitation "Substance B’". There is insufficient antecedent basis for this limitation in the claim.
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.
Claim 12 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 12 recites the limitation “R10 is a 6-10 meta heteroaryl group that is not replaced or is replaced by one or more R10-1; The type of heteroatom of the 6-10 meta heteroaryl group is selected from one or more of N, O and S, and the number of heteroatom is 1, 2, or 3”. This improperly expands the scope of Claim 1, from which Claim 12 depends, as the corresponding moiety in a compound of formula (I’) is
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. Therefore, the recited definition of R10 broadens the scope of compounds encompassed by the limitations recited at instant Claim 1.
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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 18-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are drawn to a “use” or “application” without positive reciting any steps to a process thereof.
Per MPEP 2173.05(q), “”Use” claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA1961)(“one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101”).
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 12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Unoh et. al. (“Discovery of S-217622, a Non-Covalent Oral SARS-CoV-2 3CL Protease Inhibitor Clinical Candidate for Treating COVID-19”, bioRxiv 2022.01.26.477782, published January 26th, 2022; hereinafter referred to as Unoh).
At Page 19, Unoh teaches the following compound as S-217622:
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This compound reads on a compound of formula VI as recited at instant Claim 12 when the variables are defined as follows:
R1, R3, R4, R5, R6, and R8 are hydrogen.
R2 is methyl.
R10 is
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, provided as an exemplary embodiment of R10 in dependent Claim 14.
R15 is
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Regarding Claim 14, this satisfies the conditions that R1 is hydrogen, R2 is methyl, R3 is hydrogen, R4 is hydrogen, R5 is hydrogen, R6 is hydrogen, and that R10 is
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.
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.
Claims 1-6, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Unoh et. al. (“Discovery of S-217622, a Non-Covalent Oral SARS-CoV-2 3CL Protease Inhibitor Clinical Candidate for Treating COVID-19”, bioRxiv 2022.01.26.477782, published January 26th, 2022; hereinafter referred to as Unoh) in view of Kushner et. al. (“Pharmacological uses and perspectives of heavy water and deuterated compounds”, Canadian Journal of Physiology and Pharmacology, 1999; hereinafter referred to as Kushner).
At Page 19, Unoh teaches the following compound as S-217622:
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This compound reads on a triazine derivative of formula (I’) as recited at Claim 1 when the variables are defined as follows:
R1 is hydrogen.
R2 and R7 are methyl.
R3, R4, R5, R6,and R8 are each hydrogen.
Each R9 is halogen, wherein halogen is fluoro.
m is 3.
Regarding Claim 2, this compound satisfies the condition that R9 is fluorine.
Regarding Claim 3, this compound satisfies the conditions that R2 is methyl, R9 is fluorine, and m is 3.
Regarding Claim 4, this compound satisfies the conditions that R8 is hydrogen and
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Regarding Claim 17, Unoh teaches at Page 14 oral administration of this compound as part of a pharmaceutical composition.
This compound differs from a triazine derivative of formula (I’) as recited at Claim 1 in that R1-7 do not contain at least one deuterium. Regarding Claim 6, this compound differs from compounds I-1, I-2, I-3, I-4, I-5, I-27, and I-29 in that the deuterium atoms present in these compounds are substituted for hydrogen in the compound taught by Unoh, above.
At Page 83, First Paragraph under “Properties and uses of deuterated drugs”, Kushner teaches that deuterated drugs are known in the art to have lower toxicity compared to their fully hydrogenated counterparts. Further, at Page 83, Second Column, Third Paragraph, Kushner teaches deuterated forms of drugs may have different pharmacological effects than the fully hydrogenated forms. Additionally, at Page 84, Second Column, Second Paragraph, Kushner states, “The metabolic products of many drugs are toxic, and deuteration can lower such toxicity by reducing metabolism.”
Given the breadth of positions by which a hydrogen may be substituted for deuterium in the instantly claimed triazine derivative of formula (I’), applying KSR exemplary rationale C, it would have been prima facie obvious to a person having ordinary skill in the art to attempt deuteration in various positions, motivated by the knowledge in the art, as taught by Kushner, that deuterated compounds themselves and the metabolic products thereof are associated with lower toxicity. A person having ordinary skill in the art would readily recognize decreased toxicity as a benefit in the development of compounds intended for inclusion in pharmaceutical compositions.
Conclusion
Claims 1-20 are rejected.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL JOHN BURKETT whose telephone number is (703)756-5390. The examiner can normally be reached Monday - Friday.
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, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.J.B./Examiner, Art Unit 1624
/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624
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