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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/22/2026 has been entered.
112 Rejections Withdrawn
The rejection of claim 36 under 35 USC 112(b) or 35 USC 112 (pre-AIA ), second paragraph, outlined in the previous Office Action, has been overcome by inventor’s amendment. The amendment clarifies the claim (by amending claim 12, the claim from which claim 36 immediately depends) as appropriate.
Markush Search
Inventor having amended the metes and bounds of the previously allowable subject matter of claim 1, the search has been expanded with respect to the Markush group of Formula I of claim 1, given inventor’s latest amendment. No additional art was discovered. The subject matter of claim 1 remains allowed.
With respect to the subject matter of Formula I of claim 12, the Markush search has not advanced vide infra. The single additional species remains, when using Formula 1 of claim 12: R1=OH; R2=R4=H; and R3=R5=OC1-3 alkyl (-OCH3).
All claimed but as yet unexamined subject matter which does not read on the above species is hereby withdrawn from consideration, for purposes of this Office Action, as being drawn to non-elected subject matter.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, MAINTAINED
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 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 12, 30, 31, 38, 39, 45 and 46, in so far as they read on the above defined species, remain rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US 9,000,050 B2, cited in the IDS. Inventor’s arguments have been carefully considered but are not persuasive.
As stated in the previous Office Action, the reference teaches the treatment of inter alia inflammatory bowel disease, where the inflammatory bowel disease is Crohn’s Disease and ulcerative colitis, via the modulation of SHIP1 by administering a pharmaceutical composition of the above compound (abstract; column 12, line 35 (diagramed compound); column 21, lines 32, 34, 49 and 54).
(The examiner notes for clarity of the record that the cited reference teaches other compounds which are encompassed by instant formula I of claim 12 as well.)
Inventor’s arguments have been carefully considered and may be distilled to two principal contentions: 1) that the instant inventor’s discoveries and in vivo laboratory experiments distinguish over the cited prior art; and 2) that the cited prior art is simply a generic disclosure, which is not enabled for all embodiments, and is not focused on the narrower set of diseases/disorders/conditions of the instant application.
With respect to 1 above, the examiner respectfully points out that all of the arguments presented by inventor are predicated upon limitations which are simply not present in the claims as written. As such, the arguments are irrelevant.
With respect to 2 above, the examiner respectfully points out that all issued US patents are presumed valid (35 USC 282). That is, the full scope of the disclosure of the patent is presumed to be valid and enabled. The cited patent, US 9,000,050 B2, teaches what it teaches and is valid and enabled in its entirety. The examiner also respectfully points out that it is well established that consideration of a reference is not limited to the preferred embodiments or working examples, but extends to the entire disclosure for what it fairly teaches to a person of ordinary skill in the art. (Note the discussion at MPEP 2141.02, VI.) And that being the case, the cited art does indeed fairly teach the instant method of treatment, despite it not focusing on inventor’s preferred diseases/conditions/disorders.
Claim Objections Withdrawn
The objection to claim 42, outlined in the previous Office Action, is withdrawn. The amendment cancels the claim.
Allowable Subject Matter
Claim 1 remains allowed.
Furthermore, the elected species being free of the prior art (see previous Office Action), any claim, or portion of a claim, drawn exclusively to this species constitutes allowable subject matter. That being the case, claims 29, 32, 36, 37, 40, 41, 43 and 44 are objected to because they encompass both allowable subject matter (the elected species) as well as subject matter which has not yet been completely searched.
Conclusion
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 EDT.
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.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 6/5/2026
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