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 Application
In view of the Pre-Brief Appeal Conference Decision filed on 8/11/26, PROSECUTION IS HEREBY REOPENED.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
Claims 2-5, 7-21, 23-25, 32, 34, 36-63, 65-70 have been cancelled. Claims 1, 6, 22, 26-31, 33, 35, 64, 71-87 are pending. Claims 27-31, 33, 35, 64, 71-75 have been withdrawn for being drawn to a non-elected group. Claims 82-83 have been withdrawn for being drawn to a non-elected species. Claims 1, 6, 22, 26, 76-81, 84-87 are examined herein insofar as they read on the elected invention and species.
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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claims 1, 6, 26, 76-81, 84-87 are rejected under 35 U.S.C. 102(a) as being anticipated by Blunt et al. (US Patent Application 2011/0201642, of record).
Blunt et al. teach bioactive compounds of formula I that are useful for anti-cancer treatments (abstract) in combination with a pharmaceutically acceptable excipient (paragraph 0016). All the compounds exist as pure stereoisomers (both enantiomers and diastereomers) and any mixture of the isomers (paragraph 0079). The following are preferred compounds of formula I:
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440
504
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436
498
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354
430
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404
554
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466
534
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348
470
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372
472
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464
540
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Response to Arguments
Applicant argues that Blunt fails to recite any compounds having the stereochemical configuration at the R2/R3 position as set forth in Formula IC or ID. Specifically, there are seven stereocenters in the claimed compound, affording 128 possible choices. Therefore, one of ordinary skill in the art would not be able to envisage the claimed compound given the large number of possible stereoisomers.
This is not persuasive because Blunt’s teaching clearly encompasses all stereochemical configurations, both enantiomers and diastereomers, and any mixture of the isomers. Since Figures 2-4 in Blunt already define 3-4 stereocenters, the maximum number of choices is reduced to 8 or 16, not 128, therefore easily envisaged.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham vs John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1, 6, 26, 76-81, 84-87 are rejected under 35 U.S.C. 103(a) as being obvious over Blunt et al. (US Patent Application 2011/0201642, of record).
The instant claims are directed to a compound of formula IC or ID.
Blunt et al. teach as discussed above, however, fail to disclose the claimed compounds having all seven stereocenters defined.
It would have been prima facie obvious to a person of ordinary skill in the art, at the time the claimed invention was made, to have envisaged the claimed compounds having all seven stereocenters defined.
A person of ordinary skill in the art would have been motivated to envisage the claimed compounds having all seven stereocenters defined because, at the outset, Blunt et al. teach and suggest all possible stereoisomers of the claimed compounds. Furthermore, Figures 2-4 already teaches 3 or 4 out of the possible stereocenters, therefore affording only 8 or 16 possible stereoisomers. Therefore, it would have been obvious for one of ordinary skill in the art to envisage one of these possible 8 or 16 stereoisomers with a reasonable expectation of success.
Claim Objections
Claim 22 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong S. Chong whose telephone number is (571)-272-8513. The examiner can normally be reached Monday to Friday: 9 AM to 5 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan, can be reached at (571)-270-7674. The fax phone number for the organization where this application or proceeding is assigned is (571)-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866)-217-9197 (toll-free).
/Yong S. Chong/Primary Examiner, Art Unit 1623
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