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
2. This Office Action is responsive to Applicant’s Amendment and Remarks, filed January 12, 2026. The amendment, filed January 12, 2026, is entered, wherein claims 17, 19, 21 – 25, and 27 are amended and claims 1 – 13 and 26 are canceled.
Claims 14 – 25 and 27 are pending in this application and are currently examined.
Priority
This application is a national stage application of PCT/EP2021/068695, filed July 6, 2021, which claims benefit of foreign priority document EP20305771.6, filed July 7, 2020.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Withdrawn Objections
4. The objection of claims 17, 19, and 23 in the previous Office Action, mailed July 11, 2025, is withdrawn in view of amended claims 17, 19, and 23.
Withdrawn Rejections
5. The rejection of claims 21 – 25 in the previous Office Action, mailed July 11, 2025, under 35 U.S.C. 102(a)(1) as being anticipated by Maksimovic et al. has been considered and is withdrawn in view of the amended claim 21.
The following are maintained / modified grounds of rejection necessitated by Applicant’s Amendment and Remarks, filed January 12, 2026, wherein claims 17, 19, 21 – 25, and 27 are amended and claims 1 – 13 and 26 are canceled. Previously cited references have been used to establish the maintained / modified grounds of rejection.
Maintained / Modified Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
i. Determining the scope and contents of the prior art.
ii. Ascertaining the differences between the prior art and the claims at issue.
iii. Resolving the level of ordinary skill in the pertinent art.
iv. Considering objective evidence present in the application indicating obviousness or
nonobviousness.
Claims 14 – 25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Maksimovic et al. (Journal of the American Chemical Society, May 2020, Vol. 142, Issue 22, page 9999 – 10007, cited in the previous Office Action mailed July 11, 2025) in view of Wang et al. (Biomaterials, 2019, Vol. 218, cited in the previous Office Action mailed July 11, 2025).
Regarding claims 14 – 25 and 27, Maksimovic et al. teach the novel chemoenzymatic synthesis of an active azido-modified ribose analog, 5-azidoribose (5-AR) for the application toward understanding protein ribose-glycation in vitro and in cellulo (page 10000, Scheme 1):
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The study demonstrates the utility of the probe in enriching modified targets, which are identified by label-free quantitative proteomics and high-resolution MS/MS workflows (Abstract). In cells, reducing sugars such as ribose 5-phosphate and ribose are either endogenously present as intermediates within the pentose phosphate pathway or actively imported via the Glut1 transporter. Like all reducing sugars, ribose, a metabolite involved in several crucial pathways, exists in both open aldopentose and closed cyclic hemiacetal forms (page 10000, Right Col., para. 3). Maksimovic et al. establish that the known oncoprotein and hexose deglycase, fructosamine 3-kinase (FN3K), recognizes and facilitates the removal of 5-AR glycation adducts in live cells, supporting the dynamic regulation of ribose glycation as well as validating the probe as a new platform to monitor FN3K activity. Maksimovic et al. demonstrate this probe’s utilities to uncover ribose-glycation and deglycation events as well as track FN3K activity toward establishing its potential as a new cancer vulnerability (Abstract).
However, Maksimovic et al. do not teach the compound of formula (I) is used for treating cancer, wherein the cancer is breast cancer.
Wang et al. teach the glycopolyesters (GPs) via azido-sugar initiated ring-opening polymerization of O-carboxyanhydrides (OCAs) and achieved efficient in vivo cancer targeting via GP-nanoparticle (GP-NP) mediated metabolic cell labeling followed by Click reaction. GP-NP shows controlled release of azido-sugars and can efficiently label LS174T colon cancer cells with azido groups in tumor-bearing mice. The exogenously introduced azido groups render excellent in vivo cancer targeting and retention of dibenzocyclooctyne-Cy5 (DBCO-Cy5) with an increasing tumor retention enhancement over time compared to control mice without azido labeling. The tumor accumulation of DBCO-doxorubicin is also significantly enhanced in GP-NP pretreated mice, resulting in improved in vivo anticancer efficacy. This study proposes the use of azido-sugar initiated polymerization of OCAs to form sugar delivery vehicles with high stability and controlled release, and demonstrates the increasing tumor targeting effect of DBCO-cargo over time by azido-modified tumor cells (Abstract). Also, GP-NP labeling shows limited effect on the distribution and retention of drugs in other non-cancerous tissues. The reduced dose and side effects are anticipated via the use of this two-step targeted chemotherapy for cancer treatment. The administration of biocompatible GP-NP, as the first step, enables manual introduction of chemical tags to tumor cell membranes. DBCO-drugs can then be targeted to tumor cells via efficient Click chemistry, potentially improving antitumor efficacy while reducing side effects. The method is also applicable to various types of tumor lacking known targetable receptors, such as TNBC (page 7, Right Col., para. 1).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the use of 5-AR as a tracker taught by Maksimovic et al. to a potential cancer cell targeting treatment in view of Wang et al. because Wang et al. teach that the azido groups found in the sugar can metabolically label cancer cell surface and enable the application of Click chemistry to cancer targeting, such as colon cancer and TNBC. One would have been motivated to do this because 5-AR contains an azido group of Click chemistry and also attached to a sugar. It is expected that the modification of the use of 5-AR will yield predictable results, which is targeting the colon cancer or TNBC cells with the azido group. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to modify the use of 5-AR as a tracker taught by Maksimovic et al. to a potential cancer cell targeting treatment in view of Wang et al. because Maksimovic et al. teach the use of 5-AR to track FN3K activity for cancer and Wang et al. teach that the azido group of a sugar can be used in the cancer treatment as cancer cell labeling.
Responses to Applicant’s Remarks:
Applicant’s Remarks, filed January 12, 2026, have been fully considered and are found to be not persuasive.
Regarding the rejection, Applicant argues that Maksimovic et al. in view of Wang et al. do not teach or suggest the claimed method because Maksimovic et al. do not disclose the use of a compound of formula (I) or a metabolite thereof for the treatment of cancer and Wang et al. disclose in-vivo cancer targeting via glycopolyester nanoparticle mediated metabolic cell labeling followed by click reaction, which does not cure the deficiencies of Maksimovic et al. However, the argument is not persuasive. Maksimovic et al. is relied upon for the teaching of the azido-modified sugar compound and Wang et al. is relied upon for the teaching that azido-modified sugar may be metabolically incorporated into tumor cells in vivo to enable cancer cell labeling and subsequent click-chemistry-mediated targeting. Therefore, Wang et al. disclose the cancer-targeting ability and the combination of Maksimovic et al. and Wang et al. suggests the use of azido-modified sugar compound in a cancer-related therapeutic method. Moreover, the instant specification broadly defines “treating” or “treatment” as protocols that does not require complete alleviation of signs or symptoms, does not require a cure, and have only a marginal effect on the patient (page 10, lines 23 – 32). Thus, “treatment” is not limited to administration of a compound that itself acts as a conventional anticancer agent. In view of this definition, Wang et al. teach cell labeling and click-chemistry-mediated tumor targeting is relevant to treatment of cancer.
Applicant argues that a person of ordinary skill in the art would not have found it obvious to use a compound of formula (I) as disclosed in Maksimovic et al. as an anti-cancer agent, when it is not bonded to a nanoparticle because Wang et al. disclose that azido sugar alone does not provide any specificity for cancer cells. However, the argument is not persuasive because the rejection does not require Wang et al. to teach the exact same delivery format. The rejection relies on Wang et al. for the teaching that azido-modified sugars may be employed in vivo for tumor labeling and click-mediated targeting. As Wang et al. teach the function of the azido moiety in the azido sugar, one of ordinary skill in the art would have had a reason to use the azido-modified sugar compounds for cancer cells targeting.
Applicant argues that Wang et al. teach the release of doxorubicin, which exert the anticancer effect, not the azido-sugar. However, the argument is not persuasive because the rejection does not rely on Wang et al. for the teaching that the azido sugar is the therapeutic cargo responsible for anticancer activity. Instead, Wang et al. is relied upon for teaching that the azido-modified sugar compound is capable of cancer cells targeting and labeling. Thus, Wang et al. demonstrate the usefulness of azido-modified sugar compounds in a cancer treatment strategy.
Moreover, Applicant argues that the anticancer effect is obtained with a compound of formula (I) in absence of a further conjugation with an anticancer moiety linked to an alkyne group and this unexpected effect is contrary to the teaching of Wang and could not have been considered obvious by a person of ordinary skill in the art based on Maksimovic et al. and Wang et al. However, the argument is not persuasive because Wang et al. is not relied upon for providing the evidence of anticancer activity for the azido-modified sugar compounds. As mentioned above, the instant specification define “treating” or “treatment” broadly to encompass protocols that do not provide complete alleviation of signs and symptoms, do not provide a cure, and have only a marginal effect on patients. Thus, treatment is not only limited to administration of a compound that acts as an anticancer agent. The disclosure of Wang et al. demonstrates the utilization of azido-modified sugar compounds in cancer treatment methods. For the unexpected results, the evidence provided in Example 2 is limited to a particular embodiment, such as Ara-N3 and a limited number of cancer types. Therefore, the results provided are not commensurate in scope with the claims.
Maintained / Modified Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 14 – 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 4, 7 – 8, 10, 15, and 17 of copending Application No. 17/432,331 in view of Wang et al. (Biomaterials, 2019, Vol. 218, cited in the previous Office Action mailed July 11, 2025).
a. Regarding claims 14 – 27, ‘331 teaches a method for labeling or detecting or targeting an eukaryotic cell from a multicellular organism using at least one modified monosaccharide compound (claim 1), wherein the modified monosaccharide compound is (claims 2 – 4)
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The method is for labeling cancer cells (claims 7 – 8). ‘331 also teaches a pharmaceutical composition comprising an eukaryotic cell presenting on its surface at least one modified monosaccharide, which may or may not be liked to an anti-cancer drug (claim 10). The cancer is breast cancer (claims 15 and 17).
However, ‘331 does not teach that the method is for treating cancer in a subject.
Wang et al. teach the glycopolyesters (GPs) via azido-sugar initiated ring-opening polymerization of O-carboxyanhydrides (OCAs) and achieved efficient in vivo cancer targeting via GP-nanoparticle (GP-NP) mediated metabolic cell labeling followed by Click reaction. GP-NP shows controlled release of azido-sugars and can efficiently label LS174T colon cancer cells with azido groups in tumor-bearing mice. The exogenously introduced azido groups render excellent in vivo cancer targeting and retention of dibenzocyclooctyne-Cy5 (DBCO-Cy5) with an increasing tumor retention enhancement over time compared to control mice without azido labeling. The tumor accumulation of DBCO-doxorubicin is also significantly enhanced in GP-NP pretreated mice, resulting in improved in vivo anticancer efficacy. This study proposes the use of azido-sugar initiated polymerization of OCAs to form sugar delivery vehicles with high stability and controlled release, and demonstrates the increasing tumor targeting effect of DBCO-cargo over time by azido-modified tumor cells (Abstract). Also, GP-NP labeling shows limited effect on the distribution and retention of drugs in other non-cancerous tissues. The reduced dose and side effects are anticipated via the use of this two-step targeted chemotherapy for cancer treatment. The administration of biocompatible GP-NP, as the first step, enables manual introduction of chemical tags to tumor cell membranes. DBCO-drugs can then be targeted to tumor cells via efficient Click chemistry, potentially improving antitumor efficacy while reducing side effects. The method is also applicable to various types of tumor lacking known targetable receptors, such as TNBC (page 7, Right Col., para. 1).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the method for labeling cancer cells using the modified monosaccharide compound as taught by ‘331 to a potential cancer cell targeting treatment in view of Wang et al. because Wang et al. explicitly teach that the labeling properties of the azido sugar can be used along with other cancer therapeutics in a single cancer treatment. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to modify the method for labeling cancer cells using the modified monosaccharide compound as taught by ‘331 to a potential cancer cell targeting treatment in view of Wang et al. because both ‘331 and Wang et al. teach the use of the azido sugar as a tag for cancer cells and Wang et al. also consider using this property along with other cancer therapeutic in a single cancer treatment.
This is a provisional nonstatutory double patenting rejection.
Claims 14 – 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 7, 10, 13, 15, and 19 of copending Application No. 18/021,761 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘761 anticipate the claimed invention.
b. Independent claim 14 is directed to a method for treating cancer in a subject comprising administering to the subject an effective amount of a compound of formula (I). Dependent claims 15 – 16 are directed to the method, wherein the compound of formula (I) contains an azido group. Dependent claims 17 – 18 are directed to the method, wherein the compound of formula (I) is
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Dependent claim 19 is directed to the method, wherein the metabolite of the compound of formula (I) contains a ribose. Dependent claim 20 is directed to the method, wherein the cancer is a breast cancer. Independent claims 21 is directed to a pharmaceutical composition comprising at least one modified monosaccharide compound of formula (I), or a metabolite of the compound of formula (I), in a pharmaceutically acceptable support, wherein the formula (I) is as follows:
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wherein R is a reactive group for click chemistry. Dependent claims 22 – 24 are directed to the pharmaceutical composition, wherein R is an azido group. Dependent claim 25 is directed to the pharmaceutical composition, wherein the compound of formula (I) is 5-azido-5-deoxy-D-arabinofuranose having the formula:
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Independent claim 26 and dependent claim 27 are directed to a method for treating cancer in subject comprising administering an effective amount of the pharmaceutical composition to a subject thereof, wherein the cancer is a breast cancer.
‘761 teaches a method for labeling or detecting or targeting an eukaryotic cell from a multicellular organism using at least one modified monosaccharide compound, wherein the at least one monosaccharide compound comprises a reactive group X, wherein the reactive group X is an azido group (claims 1 - 2). The at least one monosaccharide compound contains a ribose (claims 3 – 4). The method may also be used to identify cancer cells in a subject, wherein the cancer is a breast cancer (claims 5 – 7 and 15). ‘761 also teaches a pharmaceutical composition comprising an eukaryotic cell presenting on its surface at least one modified monosaccharide compound of the pentose phosphate pathway, which may or may not linked to an anti-cancer drug (claim 10). ‘761 also teaches a method for treating cancer using the pharmaceutical composition, wherein the cancer is a breast cancer (claims 13 and 19).
For these reasons above, ‘761 anticipates the claimed invention.
This is a provisional nonstatutory double patenting rejection.
Responses to Applicant’s Remarks:
Applicant’s Remarks, filed January 12, 2026, have been fully considered and are found to be not persuasive.
Regarding the rejection, Applicant requests that these double patenting rejection be held in abeyance until otherwise allowable subject matter is found. As Applicant does not file any terminal disclaimer and does not provide other remarks, the double patenting rejection are maintained.
Conclusion
No claim is found to be allowable.
Applicant's amendment necessitated the maintained / modified 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 HOI YAN LEE whose telephone number is 571-270-0265. The examiner can normally be reached Monday - Thursday 7:30 - 17:30.
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/H.Y.L./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693