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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 17 June 2026 has been entered.
Status of the Claims
Claims 1-5, 7-16 and 65-67 are pending in the instant application.
Claims 1, 5, 13, and 15-16 have been amended.
Claims 6, and 14 have been cancelled.
Claims 3, 9, 15-16, and 65-67 are withdrawn from consideration.
Claims 1-2, 4-5, 7-8, and 10-13 are examined herein.
Priority
The instant application claims benefit of priority to U.S. Provisional Application No. 63/013270, filed on 21 April 2020 and PCT/US2021/028492, filed on 21 April 2021. The claims to the benefit of priority are acknowledged. As such, the effective filing date of the claims is 21 April 2020.
Information Disclosure Statement
The information disclosure statements (IDS), submitted on 12 August 2025, 20 August 2025, and 12 December 2025 are acknowledged and considered. The submissions are in compliance with the provisions of 37 CFR 1.97.
Response to Arguments
The amendment filed on 22 May 2026 has been entered.
In view of applicant amendment to claim 1, the 102(a)(1) of record is withdrawn as Ciba does not teach fluorinated alkyl groups for R, which corresponds to the instant R9.
In addition, new 102(a)(1) rejections are necessitated by amendment and request for continuation (see below).
All rejections and objections not found below have been withdrawn.
Election/Restrictions
Applicant has amended the claims such that the previously examined species, 2-amino-3-(3-fluoro-4-hydroxyphenyl)propanoic acid., is no longer a claimed compound. As such, the search has been expanded to the next compound listed in claim 13; 2-amino-2-[(3,4-dihydroxyphenyl)methyl]-3-fluoropropanoic acid.
NEW REJECTIONS NECESSITATED BY AMENDMENT
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 (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 1-2, 4-5, 7-8, and 10-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kollonitsch et al. (US4325961A).
Regarding claim 1, Kollonitsch discloses compounds of Formula (I) (pictured below), which is a species of the instant genus when the reference R is
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62
108
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,
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72
214
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, R1 is H and R2 is H (columns 1-2).
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58
92
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Formula (I)
Regarding claim 2, Kollonitsch discloses R1, which corresponds to the instant R14 is H (column 1, line 47).
Regarding claim 4, Kollonitsch discloses the substituent corresponding to the instant R4 is hydroxyl and the substituent corresponding to the instant R10 is amino.
Regarding claim 5, Kollonitsch discloses a compound of claim 1 that is not one of the recited compounds of claim 5.
Regarding claim 7, Kollonitsch discloses the compounds can have the S isomer (column 1, line 66).
Regarding claim 8, Kollonitsch discloses the substituents corresponding to X1, X2, X3, and X4 are CR7, CR11, CR8, and CR12, respectively.
Regarding claim 10, Kollonitsch discloses the substituent corresponding to the instant R4 is hydroxyl.
Regarding claim 11, Kollonitsch discloses the substituent corresponding to the instant R1 is H
Regarding claim 12, Kollonitsch the substituent corresponding to the instant R7 is hydroxyl.
Regarding claim 13, Kollonitsch discloses 2-amino-2-[(3,4-dihydroxyphenyl)methyl]-3-fluoropropanoic acid (pictured below) (column 5, example 1).
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70
180
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Conclusion
Claims 1-2, 4-5, 7-8, and 10-13 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jerica K Wilson whose telephone number is (703)756-4690. The examiner can normally be reached Monday-Friday 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.K.W./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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