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 .
Response to Arguments
Applicant’s arguments, see Pages 2-7, filed 04/01/2026, with respect to the 103 rejection of claims 11-12, 14 and 18-24 over Chen et al. (US Patent No. 8445532) in view of Tisdale, Mechanisms of Cancer Cachexia, Physiological Reviews Vol. 89, April 2009, Pages 381-410 have been fully considered and are persuasive. The rejection of claims 11-12, 14 and 18-24 has been withdrawn.
Applicant has canceled claims 12, 14, 24 and added claim 25. Claims 11, 13, 15-23 and 25 are pending. Claims 11, 13, 15-23 and 25 are now evaluated on its merits.
Claim Rejections - 35 USC § 112
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 23 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.
Claim 23 recites the limitation "the method of claim 20, which is the attenuating the symptom of cachexia" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 20, in which claim 23 depends from recites “the method of treating cancer” and fails to include the limitation of cachexia.
Allowable Subject Matter
Claims 11, 13, 15-22 and 25 are allowed. Closest prior art is of Chen et al. (US Patent No. 8445532). Chen teaches a method of treating a tumor having resistance to an anti-cancer drug in a subject, wherein the tumor exhibits either overexpression of at least one selected from the group consisting of P-gp and Bcl-2, or over-activity of glyoxalase I. The method comprising administering to the subject, the anti-cancer drug selected from Cisplatin, Topotecan, Etoposide, Fluorouracil, Irinotecan, Mitoxantrone, Gemcitabine, Oxaliplatin and a therapeutically effective amount of compound (II)
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(claim 1, page 2 1st para.).
The above compound having R1-R2 as Hydrogen or R2 as C1-C8 alkyl or alkenyl, R5 - R8 as hydrogen, R6 as OH or R7 as OH reads to the claimed invention of formula (I), in which X is H or OH, Y is O, R1 is absent and Y and A bind to form a five membered ring. The cancers being treated taught by Chen includes non-small cell lung cancer, prostate cancer, intestinal cancer, hepatocarcinoma, leukemia, myeloma, lymphoma, mammary cancer, ovary cancer, gastric cancer, esophagus cancer, colonic cancer, or sarcoma (Page 4, 2nd para.) by way of a pharmaceutical composition of the combination of the above compounds with an anti-cancer drug (Page 8).
Conclusion
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 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 MIKHAIL O'DONNEL ROBINSON whose telephone number is (571)270-0777. The examiner can normally be reached Monday-Friday 7:30am-5:30pm.
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MIKHAIL O'DONNEL. ROBINSON
Examiner
Art Unit 1627
/MIKHAIL O'DONNEL ROBINSON/Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
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