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 .
Applicant’s Response Dated September 17, 2025
In the Response dated September 17, 2025, claims 1, 4, 6-7, 22-24, 26, and 29-30 were amended, and claim 32 was canceled. Claims 1-2, 4, 6-8, 10-13, 17-19, 22-24, 26, and 29-30 are pending. An action on the merits of claims 1-2, 4, 6-8, 10-13, 17-19, 22-24, 26, and 29-30 is contained herein.
The rejection of claims 1, 6-8, 10-13, and 29-30 under 35 U.S.C. 102(a)(1) as being anticipated by Kojima, Naoshi, Istvan E. Szabo, and Thomas C. Bruice. "Synthesis of ribonucleic guanidine: replacement of the negative phosphodiester linkages of RNA with positive guanidinium linkages." Tetrahedron 58.5 (2002): 867-879 (Kojima) has been rendered moot in view of applicant’s amendment dated September 17, 2025.
The rejection of claims 1, 6-8, and 10-13 under 35 U.S.C. 102(a)(1) as being anticipated by Ogawa, Akira, et al. "Nucleosides and Nucleotides. 180. Synthesis and Antitumor Activity of Nucleosides That Have a Hydroxylamino Group Instead of a Hydroxyl Group at the 2 ‘-or 3 ‘-Position of the Sugar Moiety." Journal of medicinal chemistry 41.25 (1998): 5094-5107 (Ogawa) has been rendered moot in view of applicant’s amendment dated September 17, 2025.
The rejection of claim 23 under 35 U.S.C. 102(a)(1) as being anticipated by Khalil et al. Eur. J. Org. Chem. 2012, 3172–3179 (Khalil) is maintained.
The rejection of claims 24 and 26 under 35 U.S.C. 102(a)(1) as being anticipated by Khalil et al. Eur. J. Org. Chem. 2012, 3172–3179 (Khalil) has been rendered moot in view of applicant’s amendment dated September 17, 2025.
The rejection of claim 18 under 35 U.S.C. 103 as being unpatentable over Kojima, Naoshi, Istvan E. Szabo, and Thomas C. Bruice. "Synthesis of ribonucleic guanidine: replacement of the negative phosphodiester linkages of RNA with positive guanidinium linkages." Tetrahedron 58.5 (2002): 867-879 (Kojima) has been rendered moot in view of applicant’s amendment dated September 17, 2025.
Rejections Set Forth in the Office Action Dated May 23, 2025
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khalil et al. Eur. J. Org. Chem. 2012, 3172–3179 (Khalil).
Applicant's arguments filed September 17, 2025 have been fully considered but they are not persuasive. Applicant submits that Khalil fails to teach or disclose a nucleoside of Formula (I') or (II') having a nucleobase selected from the group consisting of adenine, adenine comprising an N-benzoyl protecting group, adenine comprising an N-benzyl protecting group, guanine comprising an N- benzoyl protecting group, guanine comprising an N-isobutyryl group, uracil, and thymine, as recited in claim 23. Applicant submits, each of compounds 18 and 19 of Khalil has a cytosine nucleobase, and these compounds are thereby outside the scope of B of Formula (I') or (II') of claim 23 since B cannot be cytosine.
Applicant’s amendment and argument has been fully considered; however, Khalil further teaches compounds 7 and 9 (Figure 2). Compound 7 or 9 is embraced by instant formula (I’) or formula (II’), respectively, wherein B = uracil; R = H; and R2 = F. Thus, the rejection is maintained.
Conclusion
Claims 1-2, 4, 6-8, 10-13, 17-19, 22-24, 26, and 29-30 are pending. Claim 23 is rejected. Claims 24 and 26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 1-2, 4, 6-8, 10-13, 17-19, 22, and 29-30 are allowed.
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.
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK T LEWIS whose telephone number is (571)272-0655. The examiner can normally be reached Monday to Friday, 10 AM to 4 PM EST (Maxi Flex).
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/PATRICK T LEWIS/Primary Examiner, Art Unit 1691
/PL/