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 Claims
Claims 1-12 and 18-20 are pending. Acknowledgment is made of the amendment of claims 1-3 and 19, and the cancellation of claims 16 and 17, in the reply filed 08/26/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/26/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Rejections
Applicant’s cancellation of claims 16 and 17, see claims filed 08/26/2025, renders the rejection of claims 16 and 17 under 35 U.S.C. 112(a) for scope of enablement moot. The rejection of claims 16 and 17 has been withdrawn.
Applicant’s amendment to the claims, filed 08/26/2025, overcomes the rejection of claim 3 under 35 U.S.C. 112(d) for failing to further limit the subject matter of the claim upon which it depends. The rejection of claim 3 has been withdrawn.
New Rejections
Necessitated by Claim Amendment
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)(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.
Claims 1, 2, 6, 7, 10, 12, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Santilli (US 4,284,768 A).
Santilli teaches compounds of the formula shown below and methods of treating peptic ulcer disease comprising administering pharmaceutical compositions comprising said compounds.
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Santilli teaches, in claim 6, the compound 6-chloro-1,2-dihydro-4-[4-(2-hydroxyethyl)-1-piperazinyl]-1-methyl-2-oxo-3-quinolinecarboxylic acid ethyl ester, shown below, which reads on claims 1, 2, 6, 7, 10, 12, and 19, where R1 is chloro, R2 is methyl, R3 is C(O)OCH2CH3, R4 is CH2R4a, R4a is methyl substituted with OH, m is 0, and each R6 is H.
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Regarding instant claim 18, the prior art is silent regarding the method of inhibiting DGKα or DGKζ comprising administering a compound that reads on claim 1. However: "inhibiting DGKα or DGKζ" will inevitably flow from the teachings of the prior art (see above rejection), since the same composition (a compound reading on claim 1) is being administered to the same subjects (a subject in need of a therapeutically effective amount of a compound reading on claim 1). In other words, products of identical or similar composition cannot exert mutually exclusive properties when administered under the same or similar circumstances.
Even though the prior art is silent regarding " inhibiting DGKα or DGKζ", by practicing the method taught by the prior art, administration of the composition will also be "inhibiting DGKα or DGKζ” even though the prior art was not aware of it.
Apparently, Applicant has discovered a new property or advantage ("inhibiting DGKα or DGKζ") of the method taught by the prior art (the administration of a compound reading on instant claim 1 to a subject in need thereof).
MPEP 2112 I states: “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”
Claims 3-5, 8, 9, 11, and 20 are objected to as being dependent upon a rejected claim.
Conclusion
Claims 1, 2, 6, 7, 10, 12, 18, and 19 are rejected.
Claims 3-5, 8, 9, 11, and 20 are objected to.
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 RILLA M SAMSELL whose telephone number is (703)756-5841. The examiner can normally be reached Monday-Friday, 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.M.S./Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624
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