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 .
Detailed Action
Amendments
No amendments to the claims have been made as of the date of this action.
Filing Receipt and Priority
In the prior office action, the effective filing date was determined to be 09/26/2024.
Species Election
Applicant’s election of compound of example 1 (shown below) is acknowledged.
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Search and examination was broadened to include the following:
Y1 = C,
R2 = H or Methyl,
RE1 = CH(CH3)2 and cyclopropyl.
Claims 7 and 13-15 remain withdrawn being drawn to non-elected species.
The previous action stated that claims 10 and 12 were withdrawn. However, the previous action also stated that claim 10 was objected to (See allowable subject matter section). The subject matter of claim 12 has been reconsidered and the claim is rejoined.
Claims under examination are claims 1-6, 8-12, and 16-20.
Claims withdrawn are claims 7 and 13-15.
Response to Arguments
The arguments made in the remarks of 06/04/2026 are persuasive and the previous rejection made in the prior office action has been withdrawn. However, upon further consideration, the following new rejection has been made.
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.
KSR Rationales
The MPEP in section 2143, subsection I gives examples of Rationales for supporting a conclusion of obvious. These rationales are non-exhaustive and include (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Claim(s) 1-6, 8-9, 11-12, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaila (WO2024/229393, publication date 07/11/2024, filing date 05/03/2024, priority to 05/03/2023) in view of Afrin (NIH National Library of Medicine, Pharmaceutical Formulation, url=https://www.ncbi.nlm.nih.gov/books/NBK562239/#:~:text=Pharmaceutical%20formulation%20is%20the%20multistep,the%20final%20beneficial%20medicinal%20product, accessed: 05/11/2026, last updated 08/30/2023).
Independent claim 1 is drawn to a compound of Formula (V). Dependent claims 2-6, 8-9, 11 and 17-18 are drawn to specific substituents (claims 2, 4-6, 9). Claims 3, 11-12, and 17-18 are drawn to specific compounds or formulas. Claims 19-20 are drawn to compositions.
Regarding claims 1-6, 8-9, 11-12, and 17, Kaila teaches compound I-24, below.
Kaila Compound I-24
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Elected Compound
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Where the elected compound, repeated above, has a methyl group and a CH(CH3)2 (circled), the reference compound instead has a hydrogen and a simple methyl group. Additionally, the A and B ring systems (boxed) are switched in the reference compound compared to the instant claims. Similarly, the critical difference between the compound of claim 17 and the reference compound is he substitution of a hydrogen for a methyl group, as highlighted below.
Reference Compound
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Elected compound
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One of ordinary skill in the art could achieve the elected compound by replacing a hydrogens with methyl groups in each circled section above and by switching the positions of the ring systems.. For example, a hydrogen on the reference pyridine can be replaced with a methyl group and two hydrogens on the reference methyl group can be replaced with methyl groups. The simple substitution of a methyl group for a hydrogen amounts to substituents being homologs of each other. Swapping the ring systems is akin to positional isomerism. The MPEP section 2144.09 states:
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Compounds which are... 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).
Therefore, one of ordinary skill would find the instant claims obvious in view of the reference compound.
Regarding claims 19 and 20, which are drawn to compositions comprising the compound of formula 1 (claim 19) or the compound of claim 18 (claim 20) and a pharmaceutically acceptable carrier, Afrin in its introduction states “Pharmaceutical formulation is the multistep process where the active drug is mixed with all other components by considering the factors of particle size, polymorphism, pH, and solubility and becomes the final beneficial medicinal product. Benefits and constraints of the active pharmaceutical ingredients (APIs), valuable excipients, associated interactions, and manufacturing procedure are the four basic components for a successful pharmaceutical formulation,” and continues stating “The dosage form is the pharmaceutical drug product as marketed for use with a specific mixture of active ingredients and inactive components. It has to be a particular configuration (capsule shell, for example) and distributed into a particular dose.” This teachings indicates that formulating a compound into a composition comprising said compound and a pharmaceutically acceptable carrier would be within the skillset of one of ordinary skill in the art and one of ordinary skill would find claims 19 and 20 obvious over Kaila in view of Afrin.
Allowable Subject Matter
Claims 10 and 16 are 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
No claims allowed.
Claims 10 and 16 are objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUISALBERTO GONZALEZ whose telephone number is (571)272-1154. The examiner can normally be reached M-F 8:30-5:30.
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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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/LUISALBERTO GONZALEZ/Examiner, Art Unit 1624
Prosecution Insights