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/Restrictions
In accordance with the MPEP, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species and the claims drawn to the elected species are allowable, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
As indicated in the previous action, the examiner searched the compound based on the elected species, wherein: no prior art was found on the elected species. Therefore, the scope of the search and consideration was expanded in accordance with MPEP 803.02 to also include the compounds described in the rejections therein. In view of the amendment to overcome the art of record, the scope of the search and consideration is expanded to include the additional compounds described in the rejection herein.
Response to Remarks and Amendments
Applicants’ response and amendments filed December 30, 2025 has been entered. All rejections and objections not explicitly maintained herein are withdrawn. The rejections below constitute the full set of rejections being applied to the instant claims.
With regard to the rejection of claims 1-4 and 8-10 under 35 USC 112(b), in paragraph 9 of the previous action, the rejection is withdrawn in view of the amendment to clarify the proviso pertaining to compounds having Z=O.
With regard to the rejection of claims 1-4 and 8-10 under 35 USC 112(b), in paragraph 10 of the previous action, the rejection is withdrawn in view of the amendment to clarify the proviso pertaining to Z being incorporated into the Y heterocyclic group.
With regard to the rejection of claim 4 under 35 USC 112(b), in paragraph 11 of the previous action, Applicants have not made any amendments or any response to the rejection. The rejection is maintained herein since the claim still contains the indefinite “including” language.
With regard to the rejection of claims 1-4 under 35 USC 102(a)(1), the rejection is withdrawn in view of the claim amendment. Notably, the amended Y definition does not allow for the particular structure (aniline) disclosed by the prior art. Accordingly, the prior art no longer anticipates the claims as amended.
With regard to the rejection of claims 1-4 for nonstatutory double patenting over the claims of US 11,141,385 and the rejection of claims 1-4 and 8-10 for nonstatutory double patenting over the claims of US 12,390,424, the terminal disclaimer filed on December 31, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 11,141,385 and US 12,390,424 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Status of Claims
Currently, claims 1-24 are pending in the instant application and under consideration herein. Claims 5-7 and 11-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention and/or species.
Claims 1-4 and 8-10 read on an elected invention and species and therefore remain under consideration in the instant application to the extent that they read on the elected embodiment.
Claim Objections
Claims 8-10 are objected to for depending on a rejected base claim but would be allowable if rewritten in independent form.
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.
It is noted that with respect to the rejection below, for the purposes of determining if a reference is a “printed publication” for the purposes of 102(a)(1), MPEP 2128 states the following:
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99
480
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Specifically regarding electronic publications, such as online databases, as prior art the following is noted:
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78
750
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where “prior art disclosures…on an on-line database are considered to be publicly available as of the date the item was publicly posted.” Since the database entries below list the dates that the compounds were entered into the on-line database, the compounds were made publicly available as of those dates in the citation, and the claims are anticipated.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS RN135867-61-7
The prior art teaches the compound
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207
377
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which reads on instantly claimed Formula I. The prior art compounds read on the instant claims where X2 is O, Z is O, m is 1, X1 is a covalent bond, and Y is a biologically active core group of an amino acid which comprises an aryl moiety. Notably, there is no limiting definition for what is considered an amino acid in the context of the present invention, so the term is interpreted with its broadest reasonable interpretation consistent with the specification, requiring the N-C-C(=O)O skeleton. The claims and specification make it clear that the group can be encompassed within a ring structure (as the N-C group is in the prior art compound above), and also make it clear that the moiety can be substituted without limitation. Since the prior art teaches all required limitations of instant Formula (I), the compounds of the instant claims are anticipated.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alicia L. Otton whose telephone number is (571)270-7683. The examiner can normally be reached on Monday - Thursday, 8:00-6:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Fereydoun Sajjadi can be reached on 571-272-0699. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALICIA L OTTON/Primary Examiner, Art Unit 1699
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