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 .
Response to Election/Restriction filed on July 14, 2025 is acknowledged.
Claims 1-35 are pending in this application.
Restriction
Applicant’s election of Group 1 (claims 1-9 and 33-35) and the species as follows:
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in the reply filed on July 14, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Restriction was deemed to be proper and is made FINAL in this office action. Claims 10-32 are withdrawn from consideration, pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. The elected species requires reacting the C-terminal carboxylic acid group with an amine (A) to form an amide bond, and then deprotecting the N-terminal amine, and reacting the N-terminal amine with a carboxylic acid to form an amide bound. Thus, claims 2-3 and 35 are withdrawn from further consideration as being drawn to nonelected species. Claims 1, 4-9 and 33-34 are examined on the merits in this office action.
Objections
5. The abstract is objected to for the following minor informality:
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. It is important that the abstract not exceed 150 words in length since the space provided for the abstract on the computer tape used by the printer is limited. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
In the instant case, the abstract recites, “Methods for making a dolastatin…to form an amide bond...in either order.” at lines 1-7 of the abstract. This appears to be an incomplete sentence. Applicant should correct these informalities. See MPEP 608.01(b). For example, the abstract is recommended to be amended to recite, “Method for making…are described.”
Please note, the specification has not been checked to the extent necessary to determine the presence of all possible error. Applicant's cooperation is required in correcting any errors of which applicant may become aware in the specification. MPEP § 608.01.
Rejections
U.S.C. 112
6. 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.
7. Claims 4-7 and 33 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
8. Claim 4 recites, “…wherein the amine (A) is selected from the group consisting of…amino acid derivatives…peptide derivatives…wherein the amine (A) may have one or more substituents, and wherein the amine (A) may have a protecting group.” The term “may” is not an absolute phrase. May does not state what actually occurs. The specification does not fully define what is meant by “may”. Additionally, it is unclear what compounds are encompassed within the “derivatives”. Instant specification does not clearly define what compounds are encompassed within the derivatives. Therefore, the metes and bounds of the claim is unclear. Because claim 5 depends from indefinite claim 4 and does not clarify the point of confusion, they must also be rejected under 35 U.S.C. 112, second paragraph.
9. Claim 5 recites, “…wherein the amine (A) is selected from the group consisting of…amino acid derivatives…peptide derivatives…phenylalanine derivatives…tryptophan derivatives…dolaphenine derivatives.” It is unclear what compounds are encompassed within the derivatives of the amines recited. Instant specification does not clearly define what compounds are encompassed within the derivatives. Therefore, the metes and bounds of the claim is unclear.
10. Claim 6 recites, “…wherein the carboxylic acid (CA) is selected from the group consisting of…wherein the carboxylic acid (CA) may have one or more substituents, and wherein the carboxylic acid (CA) may have a protecting group.” The term “may” is not an absolute phrase. May does not state what actually occurs. The specification does not fully define what is meant by “may”. Additionally, it is unclear what compounds are encompassed within the “derivatives”. Instant specification does not clearly define what compounds are encompassed within the derivatives. Because claim 7 depends from indefinite claim 6 and does not clarify the point of confusion, they must also be rejected under 35 U.S.C. 112, second paragraph.
11. Claim 7 recites, “…wherein the carboxylic acid (CA) is selected from the group consisting of…valine derivatives…alanine derivatives…” It is unclear what compounds are encompassed within the derivatives of the amines recited. Instant specification does not clearly define what compounds are encompassed within the derivatives. Therefore, the metes and bounds of the claim is unclear. Because claim 33 depend from indefinite claim 7 without clarifying the point of confusion, claim 33 must also be rejected under 35 U.S.C. 112, 2nd paragraph.
U.S.C. 102
12. 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.
13. 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.
14. Claim(s) 1, 4-9 and 33-34 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miao et al (WO 2012/166559, filed with IDS) as evidenced by Green et al from Organic Chemistry Portal (https://www.organic-chemistry.org/protectivegroups/amino/boc-amino.htm, pp. 1-10, enclosed).
15. Miao et al teach the active method steps of instant claim 1 and 3, wherein the N-terminal end is protected and reacted to arrive at an N-terminal amine:
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(see p. 123, Example 6). The reaction scheme above teaches reacting the C-terminal carboxy group with an amine (Phe-OMe-HCl) to form an amide bond, then deprotecting the N-terminal amine (see scheme 6-3 above) and reacting it with a carboxylic acid (Boc-N-methyl-Val) to form an amide bond, meeting the limitation of instant claims 4-8 and 33-34. The R10 is an N-terminal protecting group, and R9 is H. Since Miao et al teach
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, this meets the limitation of instant claim 9. As evidenced by Organic Chemistry Portal Boc protecting group has the structure:
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(see p. 1). Since Miao et al teach all of the active method steps of instant claims, Miao et al anticipates instant claims 1, 4-9 and 33-34.
CONCLUSION
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIE HA whose telephone number is (571)272-5982. The examiner can normally be reached Monday-Thursday 5:00 am- 6:30 pm EST.
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/JULIE HA/Primary Examiner, Art Unit 1654
3/11/2026