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
Claims 1-8 and 11-15 are currently pending.
Election/Restriction
Applicant’s election with traverse of Group 1 (Claims 1-5, 8, and 15, drawn to a compound of formula I) and the elected species
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in the reply filed on 11/12/2025 is acknowledged.
Claims 6-7 and 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Groups II-III or unelected species, there being no allowable generic or linking claim. Claims 1-5, 8, and 15 are being examined on the merits herein. Again, election was made with traverse.
Applicant argues that the required restriction/election is improper because there is not a compound that is exactly encompassed within the scope of instant formula I. Applicant further argues that “in absence of directional guidance…a person skilled in the art faced with such a wide range of options would not have been motivated to arrive” at a compound encompassed within Claim 1. Applicant goes on to argue that the instant invention is an antitumor compound and that search of all the species would not be a serious search burden.
However, applicant’s arguments are not persuasive as Chin teaches that an alternative embodiment to the -CH=CH2 vinyl moiety in the cited compound
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is -CH=CH-C6H5 on Page 104. This alternative embodiment is one of a narrow list of six specific structures (Page 104, Lines 22-24). The modification is suggested explicitly and such a short list is not accurately characterized by applicant’s description of “wide range of options”. Further, Chin describes an anticancer use of the compound via mitigating oxidative stress in a cancer patient (Page 54, Lines 16-22). Regarding search burden, this is not a consideration for applications submitted under 35 USC 371; rather, unity of invention is used to determine whether restriction is appropriate in such cases (MPEP 1893.03(d)). Despite applicant’s traversal, the claims are found to lack unity of invention due to the foregoing reasons. Thus, the requirement is deemed proper and is therefore made final.
The elected species
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would require further substitution of the acrylamide with -CN, which would not be obvious in view of Chin or in addition to the modification described above. Therefore, the elected species and those compounds of Claim 5 are free of the art. The scope of the search was expanded to compounds of formula I wherein R1 and R-3 are both H.
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.
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.
Claims 1-4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Chin (WO2015027206, cited in 5/24/2025 IDS).
Chin teaches the following compound
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as an inhibitor of oxidative stress (Page 58; Page 54, Lines 16-22). The Chin compound differs from the following compound
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, encompassed within formula 1, in that the Chin compound lacks a phenyl substituent on the acrylamide moiety. The definitions of examined formula I apply to the above compound in that R1, R2, and R3 are H. Chin teaches the acrylamide, NHC(O)Re wherein Re is alkenyl, containing the vinyl -CH=CH2 can instead be a 3-phenyl acrylamide (Page 53, Lines 7-9; Page 104, Lines 18-24). Chin teaches CH=CH-C6H-5 in a list of seven total acceptable alkenyl embodiments. Chin teaches compositions comprising the compound in compositions with various adjuvants (Page 10, Lines 13-25).
One of skill in the art seeking to form an oxidative stress inhibitor, in light of Chin teaching 3-phenyl acrylamide as an alternative embodiment to the vinyl of the Chin compound above, would find it obvious to make the substitution and form the following compound of instant Claim 5:
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. The same artisan would expect the successful formation of the oxidative stress inhibitor because Chin explicitly teaches the substitution of the vinyl and suggests that such examples of alternative embodiments are nonlimiting. Chin implies a great degree of variability in the acrylamide moiety is tolerated when forming such an inhibitor.
Conclusion
Claims 1-4 and 8 are rejected.
Claims 5 and 15 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.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard G. Peckham whose telephone number is (703)756-4621. The examiner can normally be reached 8:30am - 4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached on (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD GRANT PECKHAM/Examiner, Art Unit 1627
/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627