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 is a response to Applicant’s communication filed on August 3, 2026. Application No. 18/014,932, is a 371 of PCT/CN2021/104599, filed July 5, 2021, and claims foreign priority to Chinese application No. CHINA 202010647960.2, filed July 7, 2020. In an amendment filed November 10, 2025, Applicant cancelled claims 2, 3, 8, and 10, and added new claims 11-13. In an amendment filed August 3, 2026, Applicant cancelled claim 7 and added new claims 14-16. Claims 5 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species. Claims 11-13 as well as new claim 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. Claims 1, 4, 6, 9, 14, and 15 are examined below.
Please note that upon finding allowable subject matter in the elected invention of Group I, the method of use claims, claim 15 and newly added claim 16, will be rejoined. Both claims 11 and 16 includes the term “or preventing” and will be rejected under 35 USC 112(a), for lack of enablement. It is suggested to cancel the term “or preventing” from claims 11 and 16 to avoid the 112(a), enablement rejection to advance the application to allowance upon finding allowable subject matter in the invention of Group I.
Rejection Withdrawn
The rejection of claim 6 under 35 U.S.C. 112(b) as failing to set forth the subject matter which the inventor or a joint inventor regards as the invention, is withdrawn in view of Applicant’s August 3, 2026, Amendment & Remarks.
Rejection Maintained
Claim Rejections - 35 USC § 102(a)(1)
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.
The rejection of claims 1, 4, and 9 under 35 U.S.C. 102(a)(1) as being clearly anticipated by Sun et al., CN102339254, is maintained for reasons made of record. Applicant argues that in all the compounds of Sun, the side chains are linked directly to the pentacyclic triterpenoid carbon glycoside without the CH2 unit. Applicant’s argument has been fully considered and is not persuasive.
In the Markush formulas IV, V, and VI of claim 1, the Z group is not drawn as separate substituent group attached to the ring via a bond, but rather embedded in the ring. As noted by the Applicant, the definition for Z is defined as a group consisting of carbonyl and CH-X-R6 ( the “CH” of CH-X-R6 is not a “CH2 unit”). As Z is embedded in the ring and not attached via a bond (as are R1-5), the CH represents the carbon of the ring system and X-R6 form the bonded substituents attached at that carbon. Applicant’s attention is drawn to page of 6 of the Specification, Lns. 20-25, formula II, depicted as follows:
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As shown in formula II, it is clear that the CH of CH-X-R6, is intended to be a ring carbon (not a “CH2” unit). In this case, the prior art compounds read of the definitions of X-R6 as presently construed.
As stated in the February 3, 2026, Non-Final Office action, Sun discloses the following compounds as well as pharmaceutical compositions for treating diabetes and viral diseases:
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(Sun et al., CN ‘254, citing the CAS Abstract for the compounds depicted above.) These compounds read on compounds of Formula IV of the present invention wherein Formula IV, R1, R2, and R3 are hydrogen or methyl; R4 is hydrogen; R5 is -COO-R7, where R7 is hydrogen or aryl substituted alkyl (i.e. benzyl); and Z is CH-X-R6, where X is -NHC(O)-R8, R8 is substituted or unsubstituted alkyl, or an unsubstituted aryl (i.e., phenyl).
Conclusion
Claims 1, 4, and 9 are not allowed.
Claims 6, 14, and 15 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.
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY R ROZOF whose telephone number is (571)270-5992. The examiner can normally be reached on Monday - Friday, 9:00 a.m. -5:00 p.m..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached on (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY R ROZOF/
Primary Examiner, Art Unit 1625
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