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
By amendment applicants have excluded the species elected by the examiner, therefore the search has been extended to
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, a species present in claim 3.
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) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jaffrey et al. (US 2012/0252699), cited previously, in view of Albers et al. “Structure-Based Design of Novel Boronic Acid-Based Inhibitors of Autotaxin”, J. Med. Chem. 2011, 54, 4619–4626. This new rejection was necessitated by amendment.
Jaffrey teaches fluorophores and their use with aptamers; the fluorophores include compounds of formula I:
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, where R1 and R2 can be methyl, R3 para-hyrdoxyl, Ar is phenyl, Z and Y are N and Q is O. See entire disclosure, especially abstract, [0109]- [0114],[0116]-[0145], and claims, particularly claims 1 and 4. Thus Jaffrey teaches HBI
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and its derivatives.
Jaffrey while teaching phenol substituted fluorophores does not teach phenyl boric acid (PBA) derivatives of formula I.
Albers teaches ATX inhibitors including the following compounds containing PBA:
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, structures 28 and 29 are close structurally to PBA-HBI. See entire disclosure, especially abstract and table 2. Albers notes that ATX-LPA signaling azis has been implicated in inflammation, fibrosis and tumor progression, naturally rendering it an attractive drug and biomarker. See abstract, page 4619 1st and 2nd ¶. Albers also teaches conversion of hydroxyl group to PBA as shown below:
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.
Since Albers teaches how to covert a hydroxyl group on phenol group to PBA, one of ordinary skill in the art would have a very high expectation of success in substituting PBA on the fluorphore compound of Jaffrey as HBI contains phenol producing PBA-HBI,
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. Reason to make such a substation would be to produce a fluorophore boronic acid bound aptamer capable of binding ATX, a molecular marker for inflammation, fibrosis and tumor progression. Thus the claimed invention would have been prima facie obvious since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Response to Arguments
Applicants’ arguments filed 6/23/2026 have been fully considered but they are not persuasive. Applicants assert the claim amendments which now exclude the phosphorous compound elected by the examiner has overcome the prior rejection over Jaffrey and Duan. As seen in the new rejection above applicants’ claims are still considered obvious over the combination of Jaffrey and Albers.
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 JAMES W ROGERS whose telephone number is (571)272-7838. The examiner can normally be reached 9:30-6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hartley can be reached at 571-272-0616. 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.
/JAMES W ROGERS/Primary Examiner, Art Unit 1618
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