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 .
102 Rejections Withdrawn
The rejection of claims 50-55, 57-59, 62 and 63 under 35 USC 102(a)(1), outlined in the previous Office Action, has been overcome by inventor’s amendment. The amendment narrows the scope of claimed subject matter such that it no longer reads on the cited art.
Markush Search
Inventor having overcome the outstanding art rejection, the search was expanded as called for under Markush examination practice, a compound-by-compound search, to include a single additional species. That species is defined when, using formula I: Y is Ph(CH2)2-; W is NR20 where R20=H; and RLipid is the diagramed structure of RLipid where p=1; R1=R2=R3=R4=H; Z=X=Y= -CH2-; m=n=1; t=0; and q=1.
All other claimed but as yet unexamined subject matter is hereby withdrawn from consideration, for purposes of this Office Action, as being drawn to non-elected subject matter. This subject matter will be rejoined as appropriate as the Markush examination progresses.
Claim Rejections - 35 USC § 102, NEW
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 50, 52-54, 57-59 and 63, in so far as they read on the species defined above, are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Journal of Applied Polymer Science (2015), DOI: 10.1002/APP.42569 (10 pages).
The reference explicitly teaches inventor’s compound in a reaction scheme (page 2 of 10, Scheme 1, 2nd diagramed compound in top row of scheme).
The examiner again notes that the limitation of independent claim 50 “A lipidoid composition comprising a plurality of compounds…” does not distinguish over the cited art simply because it describes a characteristic of the instant Markush set of compounds which are already explicitly defined by instant formula I (i.e. a lipidoid is a substance that resembles or has the characteristics of a lipid). Furthermore, the term “plurality” simply means plural (i.e. more than one). Note that during patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification. (See MPEP 2111.) That being the case, the fact that the independent claim includes an adjective describing the already defined Markush set of compounds of instant formula I, and that prior art reaction scheme 1 is a synthetic scheme which will intrinsically include more than a single, individual molecule of the diagramed compound (i.e. it will include a plurality of them), the prior art reaction mixture composition clearly anticipates the instant claims.
Claim Objections Withdrawn
The objection to claims 65 and 67-72 is withdrawn and reformulated below.
Allowable Subject Matter
The elected species previously being deemed free of the prior art, any claim or portion of a claim, drawn exclusively to this species constitutes allowable subject matter. Thus, claims 51, 55, 62, 65 and 67-72 are objected to because they are drawn to subject matter which encompasses allowable subject matter (the elected species) as well as subject matter which has not yet been completely searched.
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 BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EST.
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, Ali Soroush, can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 1/31/2026