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 .
Detailed Action
This office action is in response to applicant’s communication filed on 9/4/25.
Claims 1-9 are pending in this application.
Applicant's election with traverse of Group 1, claims 1-4, in the reply filed on 9/4/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the requirement is still deemed proper and is therefore made FINAL. Thus claims 5-9 are withdrawn from consideration being drawn to the non-elected invention.
Applicant's election of the following compound is acknowledged herewith:
Species 1 in claim 2
Thus claims 3-4 are withdrawn from consideration being non-readable on the elected species. Accordingly, the claims have been examined solely to the extent of the elected species. The search has not been extended to determine the patentability of the other species encompassed by the claims, at this time.
As a result, claims 1-2 are being examined in this Office Action.
Priority
The applicant claims benefit as follows:
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Objections
Claims 1-2 are objected to because of the following informalities:
The structures in claims 1-2 are blurry and should be substituted with clearer structures. The chirality of the compound in claim 2 appears to be the L form, for L-tyrosine, since applicant recites “l-tyrosine”, the naturally abundant form of the amino acid. If this is the case, the applicant should make that clearer, since the name and the structure are blurry.
Also the structures in claims 1 and 2 should be included in the body of the claim, since they occur after the period in the claims.
The compound in claim 1 appears to be labelled as “[Chem. 11]”, but there is no reference to this name in the claim. The name should either be removed or referenced in the claim.
Also in claim 2, though it is blurry, the structure appears to be labelled as “[Chem. 12]” and as “N-Iodoacetyl l-tyrosine methyl ester (TME-IAM)”, but there is no reference to either of these names in the claim. The names should either be removed or referenced in the claim.
The examiner also suggests a change to claim 1, in which the “new” and “formed” language are removed. Thus changing the claim language in claim 1 from “A new tyrosine derivative formed according to a chemical formula indicated below” to only “A tyrosine derivative with the structure of [Chem. 11]”, for clarity.
Similarly, the examiner suggests changing the claim language in claim 2 from “The new tyrosine derivative according to claim 1, wherein the new tyrosine derivative is formed according to a chemical formula indicated below” to only “A tyrosine derivative according to claim 1, with the structure of [Chem. 12]”, for clarity.
Also the examiner recommends removing the parenthesis around the substituent list. Thus the examiner recommends removing “OH”, “H”, “halogen atom” and “I”, and instead replacing with -OH, -H, halogen atom and iodine.
Appropriate correction is required.
Claim Rejections – 35 USC 112.2
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 1-2 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1 is indefinite because of the claim language “preferably”. The specification doesn’t define the metes and bounds of "preferably" in regard to the halogen atom, such that one would know what is included and what is excluded.
Claim 2 is indefinite because of the structure:
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.
Claim 2 is dependent on claim 1. Claim 1 recites the general structure below, with the definition of e being:
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Thus the structure of claim 2 is not further limiting from the general structure recited in claim 1, since in claim 2, e = OCH3 for the claimed compound.
But in claim 1, the definition of e is as follows:
e =
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Thus the compound in claim 2 does not read on the general structure claimed in claim 1.
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 the AIA 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.
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.
Claims 1-2 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Gueritte et al. (Eur. J. Med. Chem. Chmm. Ther., 1983-18, No. 5, pp. 419-424), also see the English translation and the STN abstract, in applicant’s IDS filed 8/26/22.
The instant claim is drawn to the following tyrosine derivative:
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Gueritte et al. teaches the synthesis of the following tyrosine derivative, N-iodoacetyl-L-tyrosine methyl ester, applicant’s elected species:
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Gueritte et al. teaches the reaction of an iodinated carboxylic acid, iodoacetic acid:
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with an amine, tyrosine methyl ester:
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additionally with the coupling reagent, dicyclohexylcarbodiimide (DCC), to give the coupled product, amide, which is applicant’s elected species, N-iodoacetyl-L-tyrosine methyl ester:
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N-iodoacetyl-L-tyrosine methyl ester is the intermediate amide compound that alkylates nor-5’-anhydrovinblastine (also known as Vinorelbine, which is a tertiary amine) to give the final product, compound 22, a quaternary amine.
(See both the original French document and the English translation: page 421, first column, Scheme 3, Compound 22; page 423, first column, second paragraph. Also see STN abstract. Especially see the English translation of Gueritte et al. page 423, first column, second paragraph, “compound 22” which exemplifies the synthesis of N-iodoacetyl-L-tyrosine methyl ester from iodoacetic acid and tyrosine methyl ester.)
Therefore these claims are fully met.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
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Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691