DETAILED ACTION
This Office action details a final action on the merits for the above referenced application No. Claims 1, and 5-11 are pending in this application.
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 and 5 are amended. Claims 2-4 are cancelled.
Response to Amendment
The amendments filed on 23 Oct. 2025 have been entered.
Response to Arguments
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.
Claim(s) 1, and 5-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beliaeva et al. (Angew. Chem. Int. Ed.; published 20 Sep. 2020), in view of Cheah et al. (Biochimica Biophys. Acta; published 2012) and Ganghua et al. (CN 103333079 A-English translation; published 2013) for the reasons cited in the Office action filed on 23 Jun. 2025.
Applicants Arguments
Applicants assert that first both compounds 4 and 5 are different compounds since compounds 4 and 5 are esters (-C(OH)=O) while compound 1 is not an ester. Second compound 4 of Beliaeva is directed to a deuterated group, which is completely unrelated to the compound in claim 1. Third, compound 5 includes 13C which is a stable isotope of carbon where 11C is a short-lived radioactive isotope. The purposes of each isotope are different. There would be not motivation to make the substitution. Cheah does not cure any of the deficiencies of Beliaeva. Glutamic acid and ERGO are completely different. One of ordinary skill hen considering Beliavae would not consider Ganghua. One of ordinary skill in the are would not have an expectation of success. One of ordinary skill would have to engage in undue experimentation.
Applicant's arguments filed 23 Oct. 2025 have been fully considered but they are not persuasive. Beliaeva provides for ergothioneine (ERGO) isotopologues 4
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([2H]ERGO) and 5
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([13C]ERGO). As shown, both isotopologues contain the carboxyl group (-C(OH)=O) rather than the ester functionality (-C(OR)=O, R=alkyl). In other words, Beliaeva provides for [2H]ERGO and [13C]ERGO, which are labeled amino acids differing only by isotope substitution at the amino Me group. Beliaeva teaches radioisotopes such as 14C and 35C and Beliaeva provides reason and motivation for developing radioisotopologues of ERGO. In this regard, Beliaeva teaches that labeling with a radioisotope as an essential tool in ERGO research. Beliaeva teaches and suggest ERGO metabolism by pathogenic bacteria, such as M. tuberculosis. Beliaeva teaches and motivates examining the metabolic fate of labeled ERGO in oxidatively stressed cells whereby suggesting the use of labeled ERGO to detect oxidatively stress cells. Although Beliaeva teaches and suggests the radioisotopolgues of ERGO such as [35S]ERGO and [14C]ERGO, Beliaeva is silent about [11C]ERGO. Ganghua teaches labeled amino acids for advantageous in vivo evaluation by positron emission tomography (PET). A person of ordinary skill in the art would have reasonably considered Beliaeva and Ganghua in combination before the effective filing date without the use of hindsight analysis. Beliaeva teaches that ERGO should be labeled at amino group of the amino acid. Ganghua teaches, enables and motivates placing a 11C label via [11C]MeOTf at the amino groups of amino acids to enable PET imaging experiments for detecting and localizing diseased tissue. Cheah teaches and suggests that ERGO preferentially accumulates in cells predisposed to high levels of oxidative stress and inflammation. Cheah teaches and suggests diseases such as AD. A recognized advantage is the strongest reason to combine. It is prima facie obvious to substitute one isotope label for another. It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the compounds of Beliaeva ([2H]ERGO and [13C]ERGO) by substituting the [2H]Me or [13C]Me with [11C]Me as taught by Ganghua because the substituting would have been expected to enable in vivo PET imaging experiments using the [11C]ERGO capable of sensitive and selective detection diseased tissue. Potential advantages of the obvious [11C]ERGO would have been expected to include PET detection of inflammation, pathogenic bacteria and AD; in vivo evaluation of the role of ERGO in gut microbiome; and PET detection of oxidatively stressed cells such as cancer cells. There would have been a reasonable expectation of success since Beliaeva teaches that the isotope label should be placed at the amino group of ERGO to arrive at a ERGO equivalent capable of detection and because Ganghua teaches and enables placing [11C]Me at the amino of amino acids using [11C]MeOTf.
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 SEAN R DONOHUE whose telephone number is (571)270-7441. The examiner can normally be reached on Monday - Friday, 8:00 - 5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached on (571)272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618
/SEAN R. DONOHUE/
Examiner, Art Unit 1618
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