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
Claims 2-16 are pending in the application. Claims 2 and 4 are rejected. Claims 3 and 6-16 are withdrawn from further consideration. Claim 5 is objected to.
Response to Amendment / Argument
Rejections made in the previous Office Action have been overcome by Applicant's amendments to the claims. Therefore, arguments pertaining to these rejections will not be addressed.
Election/Restrictions
The instant claims are being examined according to MPEP 803.02 where the search has been extended to include the species: 2-methoxy-10-[2-(1-methyl-2-piperidinyl)ethyl]-10H-phenothiazine and 1,1’-(10H-phenothiazine-2,10-diyl)bis(ethan-1-one), which are not allowable. Additional subject matter is withdrawn from consideration.
Claim Objections
Claim 5 should be amended to recite “A compound according to claim 4, selected from the group consisting of:” or “A compound according to claim 4, which is”.
Claim Rejections - 35 USC § 112(b)
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 2 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.
Claim 2 is rejected as indefinite based on the limitation “at least one of R1, R2, R3 and R4 is selected from” a list. The claim does not define what the variables are permitted to be when they are not at least one of the options selected from the list. Examination (including determination of which compounds are actually embraced by the instant claim) has been limited to the elected species and the species of the expanded search. For purposes of examination the Examiner has assumed that claim 2 minimally encompasses embodiments where the remainder not selected from the list can be hydrogen.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kau et al. Cancer Cell, 2003, pages 463-476.
The prior art teaches 2-methoxy-10-[2-(1-methyl-2-piperidinyl)ethyl]-10H-phenothiazine on page 468 having the following structure:
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The compound is embraced by the formula of claim 2 where R6 is CH3, n is 1, Q is -CH2-, one of R1 and R4 is -OCH3 and the other is hydrogen, R2 and R3 are hydrogen and X is S.
Claim(s) 4 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by U.S. Patent No. 7,384,933 by Auvin et al.
The prior art teaches 1-(10-acetyl-10H-phenothiazin-2-yl)ethanone in column 18, lines 15-29, which has the following structure:
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253
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The compound is recited in instant claim 4 as the third compound (1,1’-(10H-phenothiazine-2,10-diyl)bis(ethan-1-one)).
Allowable Subject Matter
Claim 5 is 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 and amended to correct for the claim objection above.
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 MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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