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
This office action is in response to applicant’s communication filed on 7/20/26. Two sets of new and amended claims were filed on 7/20/26 and 6/26/26.
Thus claims 1-2, 5-11, 17-18, 20-21, 23-34 and 38-40 are now pending in this application.
Claims 7-11, 17-18, 20-21, 23-29 and 32-34 remain withdrawn from consideration as being drawn to the non-elected invention. As a result, claims 1-2, 5-6, 30-31 and 38-40 are being examined in this Office Action.
Withdrawn Rejections
The rejection of claim 31 under 35 U.S.C. 112(b) is withdrawn. Claim 31 now depends on claim 1.
Applicant's arguments with respect to the rejection of claims 1-2 and 30-31 under 35 U.S.C. 103 as obvious over Kwon et al. (J. Med. Chem., 1989, 32, 1491-1496), as evidenced by Rosman (Taylor Pure Appl. Chem., 1999, 71, 1593), have been fully considered and are persuasive. The rejection is withdrawn.
Kwon et al. teaches only the non-deuterated bis(aziridinyl)phosphoramidate. Rosman only teaches the natural abundance of deuterium. The chance that trace deuterium is present in some molecules of a natural sample does not show that the claimed deuterated compound necessarily flows from Kwon et al. Neither reference gives a reason to put deuterium at the claimed A positions. Neither reference teaches how to do so.
Objections
Claims 6 and 31 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.
Claim Rejections – 35 USC 112
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.
Claims 1-2, 5, 30, 38 and 40 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
Claim 1 has been amended to recite a new structure:
PNG
media_image1.png
94
136
media_image1.png
Greyscale
This new structure has only one minus charge on the oxygen. M is drawn as a separate counterion. Thus, the new structure is an ionic salt with an anion that has a charge of -1.
Claim 1 recites that M is “an alkali metal, an alkaline earth metal, or an ammonium radical.” The newly included second structure of claim 1 shows one O⁻ paired with one M. But an alkaline earth metal has a charge of +2. One O⁻ cannot balance a +2 cation. New claim 38 recites Ca²⁺ as M. It is not clear what compound is claimed when M is an alkaline earth metal. It may be a salt with two anions and one cation. It may be some other form. The claims do not say. Thus, the metes and bounds of the claims cannot be determined.
Claims 2 and 30 depend on claim 1 and do not limit M to a +1 cation. Claims 5 and 40 also recite the new ionic structure. These claims do not limit M to a +1 cation. Thus claims 2, 5, 30 and 40 are rejected for the same reason. Appropriate correction is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
New claims 39 and 40 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to include all the limitations of the claim upon which they depend.
Claim 1 shows eight A groups for each of the structures. Each A is H or D. In the structures of claims 39 and 40 (see below), the upper carbon of the right aziridine ring has a bond with no atom label. Only seven A groups are shown. In a chemical structure, a bond with no label at its end is a methyl group. Thus, claims 39 and 40 show a compound with a methyl group on the aziridine ring. Claim 1 does not include such a compound. Thus, claims 39 and 40 do not include all of the limitations of claim 1.
PNG
media_image2.png
98
140
media_image2.png
Greyscale
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements. Appropriate correction is required.
Conclusion
No claim is 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER C SAWYER/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691
Prosecution Insights