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/Restriction
The examiner notes for clarity of the record that inventor has added new claims 29-46. The subject matter of these new claims is encompassed by the original election/restriction requirement (an election of species across the entire claim set).
Claim Objections Withdrawn
The objections to claims 17 and 21, outlined in the previous Office Action, have been overcome by inventor’s amendment. The amendment cancels the claims.
112 Rejections Withdrawn
The rejection of claim 12 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 as appropriate.
The rejection of claims 14-18, 21, 22, 27 and 28 under 35 USC 112(b) or 35 USC 112 (pre-AIA ), second paragraph, outlined in the previous Office Action (indefinite from indefinite), has been overcome by inventor’s amendment. The amendment cancels the claims.
Claim Rejections - 35 USC § 112, NEW
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.
Claim 36 is 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.
There is insufficient antecedent basis for compounds I-40, I-41, I, 42, I-46, I-50, I-51 and I-52. Claim 12, the claim from which claim 36 immediately depends, explicitly teaches that when R2 and R3, R3 and R4, or R4 and R5 are taken together to form a substituted or unsubstituted 5- or 6-membered heterocycle, then R4 and R5, R2 and R5, or R2 and R3, respectively, are independently H or C1-3 alkyl. That is, there is no antecedent basis for the moieties -OMe or -OH in the R5 position in compounds I-40, I-41, I, 42, I-46, I-50, I-51 and I-52.
102 Rejections Withdrawn
The rejection of claims 1, 3-7, 11, 12, 14, 15, 17, 21, 22, 27 and 28 under 35 USC 102(a)(1), outlined in the previous Office Action, has been overcome by inventor’s amendment. With respect to claim 1, the amendment narrows the scope of the claimed subject matter such that it no longer reads on the cited art. With respect to claim 12, inventor’s amendment and arguments have been carefully considered and are persuasive.
With respect to claims 3-7, 11, 14, 15, 17, 21, 22, 27 and 28, the amendment cancels the claims.
Markush Search
Inventor having overcome the outstanding art rejection, the search was expanded as called for under Markush examination practice, a compound-by-compound search. This resulted in all species being searched, with respect to Formula I of independent compound claim 1, and deemed free of the art. The search was expanded yet again, now with respect to Formula I of independent method claim 12, to include a single additional species. That species is defined 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, NEW
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, are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US 9,000,050 B2, cited in the IDS.
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.)
Allowable Subject Matter
Claim 1 is allowed.
Furthermore, the elected species now having been deemed free of the prior art vide supra, any claim, or portion of a claim, drawn exclusively to this species also constitutes allowable subject matter. That being the case, claims 29, 32, 37 and 40-44 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
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 BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EST.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 1/18/2026