DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The instant application is a continuation of US Application 17/471,936 (filed September 10, 2021, now US Patent 12,390,424), which is a continuation of US Application 17/012,783 (filed September 4, 2020, now US Patent 11,141,385), which is a division of US Application 16/158,608 (filed October 12, 2018, now US Patent 10,765,645), which is a division of US Application 15/316,742 (filed December 6, 2016, now US Patent 10,117,840), which is a 35 USC 371 National Stage filing of PCT/US2015/034516, filed June 5, 2015, which claims the benefit of an effective US filing date under 35 USC 119(e) from US Provisional application 62/008,925, filed June 6, 2014.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-12, in the reply filed September 22, 2025 is acknowledged. Further, Applicant’s election without traverse of the species of O-fluorosulfonyl-L-tyrosine
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as the compound of Formula (I) in the same reply is also acknowledged. Applicant notes that claims 1-4 and 8-10 read on the elected species within the elected group.
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 above, the Examiner searched the claimed invention based on the elected species above, wherein: no prior art was found on the elected species. Thus the scope of the search and examination was expanded to further include the scope describe in the prior art rejection herein. The examined scope was not found to be free of the prior art and was thus not expanded further.
Status of Claims
Currently, claims 1-24 are pending in the instant application. 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 are therefore under consideration in the instant application to the extent that they read on the elected embodiment.
Claim Rejections – 35 U.S.C. § 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.
Claims 1-4 and 8-10 are 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 pre-AIA the applicant regards as the invention.
Claim 1 is indefinite due to the recitation of the proviso
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. The claim does not make clear if the proviso is intended to limit Formula (I) such that when Z is O, Y must be a moiety comprising an aryl group or heteroaryl group, or alternatively if Y can be any of the definitions recited in the Y definition but the proviso only applies when Y contains an aryl or heteroaryl moiety. The dependent claims do not clarify and are also rejected as indefinite. Appropriate clarification and correction is required.
Claim 1 is further indefinite due to the recitation of the proviso “when Z is N…(b) m is 1, X1 is a covalent bond or CH2CH2, and the Z is a nitrogen in an aromatic or nonaromatic heterocyclic ring portion of core group Y” (emphasis added). In particular, there is no definition of Z or Y set forth which allows the Z group to be structurally integrated into the Y group, such that there is no antecedent basis or positive recitation to allow for the exclusionary proviso. The dependent claims do not clarify and are also rejected as indefinite. Appropriate clarification and correction is required.
Regarding claim 4, the phrase "including" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). See the recitation of heteroaryl moiety “including” heteroaryl materials comprising a single aromatic ring, or multiple fused aromatic rings. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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 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 1-4 are rejected under 102(a)(1) as anticipated by Stevens.
The prior art teaches the compound
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(compound 3, p. 2664). The prior art compound reads on instant formula (I) where Y is aniline, Z is O, X1 is a covalent bond, X2 is O, and m=n=1. Since the reference teaches all required limitations of the instant claims, the claims are anticipated.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-4 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-4 of US Patent 11,141,385.
An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim is not patentably distinct from the reference claim(s) because the examined claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the conflicting are drawn to compounds of formula (I)
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, which overlap with Formula (I) of the instant claims where Y is defined as an antibiotic.
For example, patented claim 4 recites the compound
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which anticipates instant Formula (I). Because the instant claims completely encompass the compounds of the patented claims, with dependent claims reciting compounds which anticipate those of the instantly claimed formula, a double patenting rejection is appropriate.
Claims 1-4 and 8-10 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-7 of US Patent 12,390,424.
An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim is not patentably distinct from the reference claim(s) because the examined claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the conflicting are drawn to a method of covalently attaching SO2F or CH2CH2SO2F substituted polypeptide to a protein, which necessarily anticipates the resulting SO2F- of CH2CH2SO2F-substituted protein itself. Patented claim 2 specifically recites that the amino acid core group is SO2F or CH2CH2SO2F-substituted tyrosine, as required for the instantly elected species Because the instant claims completely encompass the compounds of the conflicting claims, with dependent claims reciting compounds which anticipate those of the instantly claimed formula, a double patenting rejection is appropriate.
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 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA L OTTON/Primary Examiner, Art Unit 1699