DETAILED ACTION
Status of the Claims
Claims 1-2 and 15-24 are currently pending.
Claims 1-2 and 15-22 are amended.
Claims 3-14 have been canceled by Applicant.
Claims 23-24 are new.
Claims 1-2 and 15-24 are the subject of this Office Action.
The following Office Action is in response to Applicant’s communication dated 12/01/2025. Rejection(s) and/or objection(s) not reiterated from previous office actions are hereby withdrawn. Specifically, the objections to the Abstract and to the Drawings are withdrawn in light of the substitute Abstract and Drawings submitted in the response of 12/01/2025. The following rejection(s) and/or objection(s) are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/01/2025 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/01/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
New Claim Rejections - 35 USC § 102
Necessitated by Amendments
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Watts et al., Liu et al., Gouliaev et al., and/or Li et al.
Claims 23-24 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Watts et al. (U.S. 2019/0169607 A1, published 06/06/2019), Liu et al. (WO 2019/168654 A2, published 09/06/2019), Gouliaev et al. (U.S. 2013/0281324 A1, published 10/24/2013), and/or Li et al. (WO 2018/166532 A1, published 09/20/2018).
Claim 23 recites the limitation of an “aqueous composition prepared according to the method of claim 1” and claim 24 recites the limitation of a “library comprising a plurality of different bifunctional molecules prepared according to the method of claim 2”, and are therefore product-by-process claims. Note that as per MPEP § 2113, “product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”. The same MPEP section states that “‘even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 23, the process steps imply the structural limitations from the method steps of claim 1, an example of which can be visualized in Fig. 5D:
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Note that claim 1 uses the transitional phrase “comprising”, which is inclusive or open-ended and does not exclude additional, unrecited elements or method steps, as stated in MPEP § 2111.03. Therefore, any number and manner of other steps could be performed on the composition made from the method of claim 1 and it would still fall in the metes and bounds of claim 23. Note that claim 24 recites the method of claim 2, which in turn recites the “method of claim 1, which further comprises recovering the library from the aqueous composition” and therefore would be expected to be very similar in scope to claim 23, with the notable exception that claim 24 requires a plurality of molecules. Therefore, the scope of the compounds encompassed by claims 23-24 is very broad.
Several prior art references recite DNA-encoded chemical libraries that include embodiments that are encompassed by claims 23-24, including, but not limited to:
Watts et al. (U.S. 2019/0169607 A1, published 06/06/2019)
Liu et al. (WO 2019/168654 A2, published 09/06/2019)
Gouliaev et al. (U.S. 2013/0281324 A1, published 10/24/2013)
Li et al. (WO 2018/166532 A1, published 09/20/2018)
These references each teaches DNA-encoded libraries which comprise compounds that would reasonably meet all of the structural limitations of the claimed products (see above) except for the product-by-process limitations and thus would either anticipate or render obvious the claimed compositions. Thus, the specific process limitations of claims 23-24 do not distinguish the claimed invention from the prior art in accordance with MPEP § 2113. One of ordinary skill would expect the product to be the same no matter how it was synthesized and/or prepared.
Allowable Subject Matter
Claims 1-2 and 15-22 are allowed for the reason that a thorough search demonstrated the prior art does not teach or fairly suggest Applicants' claimed methods of palladium-catalyzed arylation of an iodo-substituted aromatic ring moiety at a β-C(sp3)-H or γ-C(sp3)-H position of one or more reactant C4-C16 aliphatic carboxylic acid, carboxamide, or masked ketone units in aqueous solution. While such reactions had been reported previously in the absence of water, as per:
Zhu et al. (J. Amer. Chem. Soc., 2017, 139:16080-16083, of record),
He et al. (Chem. Rev., 2017, 117:8754-8786, of record),
Zhu et al. (J. Amer. Chem. Soc., 2018, 140:3564-3568, of record), and/or
Gerry et al. (J. Amer. Chem. Soc., 2019, 141:10225-10235, of record),
no prior art was found reporting or suggesting such palladium-catalyzed synthesis in aqueous solution, as currently claimed.
Conclusion
Claims 1-2 and 15-22 are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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/JEREMY C FLINDERS/Primary Examiner, Art Unit 1684