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 .
Election/Restriction
The examiner notes for clarity of the record that inventor has added new claims 36-44. These new method claims are encompassed by non-elected Group III. However, the composition claims of elected Group I having been found allowable vide infra, the method claims of Group III have been rejoined. (But note the new 112(b) rejection of new claim 41 below.)
112 Rejections Withdrawn
The rejections of claims 13 and 34 under 35 USC 112(b) or 35 USC 112 (pre-AIA ), second paragraph, outlined in the previous Office Action, have been overcome by inventor’s amendment. The amendment clarifies the claims as appropriate.
Claim Rejections - 35 USC § 112, NEW
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.
Claim 41 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation “…semisynthetic derivatives of podophyllotoxin…”, and the claim also recites “…(etoposide)…” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
102 Rejections Withdrawn
The first listed rejection of claim 1 under 35 USC 112(a)(1), outlined in the previous Office Action, has been overcome by inventor’s amendment. The amendment narrows the scope of the claimed subject matter such that it no longer reads on the cited art.
The rejection of claims 1, 2, 4 and 8 under 35 USC 112(a)(1), outlined in the previous Office Action, has been overcome by inventor’s amendment and arguments. With respect to claim 2, the amendment cancels the claim. With respect to the remaining claims, inventor’s amendment and arguments have been carefully considered and are persuasive.
The rejection of claims 1, 2, and 4 under 35 USC 112(a)(1), outlined in the previous Office Action, has been overcome by inventor’s amendment and arguments. With respect to claim 2, the amendment cancels the claim. With respect to the remaining claims, inventor’s amendment and arguments have been carefully considered and are persuasive.
The second listed rejection of claim 1 under 35 USC 112(a)(1), outlined in the previous Office Action, has been overcome by inventor’s amendment. The amendment narrows the scope of the claimed subject matter such that it no longer reads on the cited art.
Claim Objections Withdrawn
The objection to claims 3, 5-7, 9-12, 14 and 35, as being dependent from a rejected base claim but otherwise allowable, is withdrawn.
Allowable Subject Matter
Claims 1, 3-14, 23-27, 34-40 and 42-44 are allowed. The subject matter of claim 41 would be allowable once the 112 rejection outlined above has been overcome. The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is the prior art of record. As is clear from the record at this point in the prosecution, the cited prior art does not teach, show, suggest or make obvious the instant composition and its method of use.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EST.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 2/1/2026