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 15-34 are currently pending in the instant application. Applicants have canceled claims 1-14 and added new claims 15-34 in an amendment filed on May 10, 2023. Claims 15, 21, 22, 23, 29, 30, 31 and 33 are rejected and claims 16-20, 24-28, 32 and 34 are objected in this Office Action.
I. Priority
The instant application is a 371 of PCT/EP2021/082388, filed on November 20, 2021 and claims benefit of Foreign Application EPO 20208947.0, filed on November 20, 2020.
II. Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 11, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
III. Rejections
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.
Claims 15, 21, 29, 31 and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Malins, et al. (Journal of the American Chemical Society (abstract), 2017, 139(14), 5233-5241; retrieved from CAPLUS, Accession No. 2017:476613). The instant invention claims
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749
827
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754
801
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The Malin, et al. reference teaches peptide macrocyclic compounds such as
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308
465
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(See RN 2089436-25-7) wherein R is methyl; R’ is H or R is H and R’ is methyl; Z is O; X is 1-methylethyl; Y5 is benzyl; Y4 is 1-methylethyl; Y3 is benzyl; Y2 is 2-methylpropyl; Y1 is 2-methylpropyl. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claims 22, 23, 30, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka, et al. (International Journal of Peptide Research and Therapeutics, Vol.13, Nos. 1-2, June 2007, 271-279). The instant invention claims
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829
815
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38
480
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The Tanaka, et al. reference teaches peptide oxazolidines such as
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142
175
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67
91
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(See compound 18, scheme 4, page 275) wherein R is methyl and R’ is H or R is H and R’ is methyl; Z is O; X is 2-methylpropyl; PG is H, PG is Fmoc and PG is Boc. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 29 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. Specifically, claim 29 is dependent on claim 15 which is drawn to a compound of formula (I)
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259
326
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. Claim 29 contains the limitation “W is OH or SH”. However, the compound of formula I in claim 15 does not have a variable W. Therefore, this limitation lacks antecedent basis. The claim is considered indefinite because it is unclear what Applicants are referring to with variable W. Applicants are suggested to amend claim 29 by deleting the definition for variable W to overcome the rejection.
Claim 30 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. Specifically, claim 29 is dependent on claim 22 which is drawn to a compound of formula (II)
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140
267
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. Claim 30 contains the limitations “W is OH or SH” “Y1 to Y5 each are…” . However, the compound of formula II in claim 22 does not have variables W or Y1 to Y5. Therefore, these limitations lacks antecedent basis. The claim is considered indefinite because it is unclear what Applicants are referring to with variables W and Y1 to Y5. Applicants are suggested to amend claim 30 by deleting the definition for variables W and Y1 to Y5 to overcome the rejection.
IV. Objections
Dependent Claim Objections
Dependent Claims 16-20, 24-28, 32 and 34 are objected to as being dependent upon a rejected based claim. To overcome this objection, Applicant should rewrite said claims in an independent form and include the limitations of the base claim and any intervening claim.
Claim Objections
Claim 15, 20 and 22 are objected to because of the following informalities: claims 15 and 22 contains the phrase “and salts thereof” and should be amended to read “or salts thereof”. Claim 20 is missing a period at the end of the claim. Each claim begins with a capital letter and ends with a period (MPEP 608.01 (m)). Appropriate correction is required.
V. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Joseph McKane can be reached on 571-272-0699. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626