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 Claims
Claims 1-2, 4-5, 9-15 are pending.
Priority
Applicant’s claim for benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. This application is a national stage entry of and claims priority to Application Serial No. PCT/NL2020/050782, filed 12/11/2020, and further claims priority to foreign application NL2024431, filed 12/11/2019.
Information Disclosure Statement
All references from IDS(s) received 9/29/2022, 03/06/2025, and 06/17/2025 have been considered unless marked with a strikethrough.
Response to Arguments
Applicant's arguments in the filed 11/26/2025 have been fully considered and have been found persuasive.
In a non-final dated 07/17/2025, Claims 1-15 were examined upon their merits.
In a non-final dated 07/17/2025, Claims 1-15 were rejected under 35 U.S.C. 103. Claim 15 was rejected under 35 U.S.C. 112.
In response, the Applicant amended claims 1 and 15 and cancelled claims 3 and 6-8. The rejections for the cancelled claims is moot and withdrawn.
With respect to the 112 rejection, the applicant amended claim 15 to strikethrough “preferably.” Therefore the 112 rejection is moot and withdrawn.
With respect to the 103 rejection, the Applicant argued that the primary reference provided by the Examiner (Graaf) fails to teach the instantly claimed invention of using the compound for explicitly memory function and/or plaque load in Alzheimer’s disease. Although the Examiner agrees with this argument, it would still be obvious to a person skilled in the art at the time. The Examiner acknowledges that the Applicant provided results to show that the compounds have significant function in memory function and/or plaque load in Alzheimer’s disease, however because the compound is taught by the primary reference for Alzheimer’s disease it would be considered expected results, since memory function and/or plaque load would be considered symptomatic/functionally related to Alzheimer’s disease. The MPEP states that 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 rePayne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See MPEP 2144.09(I). Further, the claims do not reflect any critical ranges that would separate the instant claims in terms of criticality from the prior art. Therefore, the 103 rejection is maintained. See below.
MAINTAINED REJECTIONS
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-5, 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Graaf, A. et al. (WO2014098586A1; cited in the IDS filed 9/29/2022; “Graaf”) in view of Cai, P. et al. (ACS Chem. Neurosci. 2017, 8, 11, 2496–2511; cited in the IDS filed 9/29/2022; “Cai”). .
Graaf teaches an overlapping genus of a Trolox core structure, including the elected specie SUL-109 (Claim 1 and Page 11, Table 1). Graaf also teaches the compounds for use in treating neurodegenerative diseases, such as Alzheimer’s disease (Claim 3).
Graaf fails to explicitly teach that the compounds improve memory function or reduce plaque load in an Alzheimer’s patient.
Cai teaches compounds with an overlapping genus of a Trolox core structure for use in Alzheimer’s disease. Cai does not explicitly teach the elected specie, however, Cai does teach that the Trolox compounds used in Alzheimer’s disease improve cognition and memory (Abstract).
Therefore, it would be obvious to a person skilled in the art that using SUL-109 for the treatment of Alzheimer’s, as taught by Graaf, would include the improvement of cognition and memory, as seen with the Trolox core compounds taught by Cai.
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham.
Examples of rationales that may support a conclusion of obviousness 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.
Applying KSR example rationale (A), it would have been prima facie obvious to extract the compounds and methods of use for using SUL-109 in the treatment of Alzheimer’s, as taught by Graaf, and apply it to specifically improve symptoms of Alzheimer’s such as cognition and memory improvement. A person skilled in the art would have been motivated to do so because Trolox-based compounds for treating Alzheimer’s have been shown to do so, as taught by Cai. Therefore, claims 1-15 would have been obvious to a person skilled in the art at the time.
Conclusion
Claims 1-2, 4-5, 9-15 are rejected.
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 NICOLA MARIA BAUER whose telephone number is (703)756-1269. The examiner can normally be reached Monday-Friday 7:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clint Brooks can be reached at (571) 270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.M.B./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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