DETAILED ACTION
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 .
Election/Restrictions and Claim Status
Although claim 8 of the 6/30/26 claims is listed as ‘Previously Presented’ it is an amended claim (see 4th to last line). Applicants are remined to make amendments in accord with 37 CFR 1.121. The amendment of 6/30/26 is being considered.
Applicants’ amendments and arguments filed 6/30/26 are acknowledged. Any objection or rejection from the office action of 4/14/26 that is not addressed below, is withdrawn based on the amendments.
Previously, Group 1 and the species of compound X7 were elected.
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/12/26.
As recognized by applicant, claims 4 and 10 do not read on the elected species. Instant claim 12 has been interpreted as reading on the elected species since it contains -CH2SH which is interpreted as a linker suitable for binding. A compound consisting of compound X7 was found to be free of the prior art. The search was extended in accord with MPEP 803.02.
Claims 4 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/12/26.
Claims 1-3, 5-9, 11-13 and 16 are being examined.
Priority
The priority information is found in the filing receipt dated 4/1/24.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/10/26 has been considered by the examiner.
Claim Rejections - 35 USC § 103
The rejection below is a new rejection based on the claim amendments.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 5-9, 11-13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brasun et al. (NPL citation 3 of IDS 7/31/23; ‘Brasun’) in view of Sovago et al. (‘Metal ion selectivity of oligopeptides’ Dalton Trans 2006 pages 3841-3854; ‘Sovago’).
Brasun teach characterizing copper binding properties of a 14-membered cyclic tetrapeptide containing histidine and lysine side chains (abstract). Brasun teach the 14-memebered cyclic tetrapeptide is a structural analog of a known peptide (last paragraph of introduction on page 813) and that the protonation constants for the 14 membered cyclic tetrapeptide are higher than those of the known peptide (first paragraph of section 3 on page 814). Brasun shows the structure of a compound in figure 1 c(beta3homoLydHisbeta-AlaHis):
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Brasun teach that the compound forms complexes with copper (abstract and Table 1).
Brasun does not teach a specific example that reads on the instant claims.
Sovago teach metal ion selectivity of oligopeptides (title and abstract). Sovago teach that among the side chain donor functions that the imidazole of histidyl and thiolate of cysteinyl residues are the most effective ligating groups (abstract). Sovago teach that among the side chain residues, cysteine and histidine are the most important and interesting results can be obtained for aspartyl (page 3852 first paragraph). Sovago teach His and Cys as strongly coordinating and Lys and Asp as weakly coordinating (pages 3847-3848 connecting paragraph). Sovago teach that Cys is known to have the same or similar effect to that of His (page 3846 first complete paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Brasun because Brasun teach characterizing binding properties of a 14-membered cyclic tetrapeptides containing histidine and lysine side chains (abstract). Since Sovago teach additional details about metal ion selectivity of oligopeptides (title and abstract) one would have been motivated to use the teachings of Sovago. Since Sovago teach that Cys is known to have the same or similar effect to that of His (page 3846 first complete paragraph) and Sovago teach His and Cys as strongly coordinating (pages 3847-3848 connecting paragraph) one would have been motivated to substitute one or both of the His in the compound of Brasun with Cys resulting in c(beta3homoLysdCysdbeta-AlaCys) and c(beta3homoLysdHisbeta-AlaCys). Further, since Sovago teach that among the side chain residues, interesting results can be obtained for aspartyl (page 3852 first paragraph) and Lys and Asp as weakly coordinating (pages 3847-3848 connecting paragraph) one would have been motivated to substitute Asp for Lys as well resulting in c(beta3homoAspdCysdbeta-AlaCys). Since Brasun teach characterizing binding properties of a 14-membered cyclic tetrapeptides (abstract) one would have been motivated to prepare in appropriate compositions. One would have had a reasonable expectation of success since Brasun teach methods of synthesis (section 2.1). Further, Sovago teach that Cys is known to have the same or similar effect to that of His (page 3846 first complete paragraph)
In relation to the compound of claims 1-3, 5-8, 11-12 and 16, c(beta3homoLysdCysdbeta-AlaCys) as discussed above is such that each R is H; RA1 and RA2 are each a Cys side chain -CH2-SH; RB1 is the Lys side chain which is a hydrocarbon containing 1-12 carbons which is substituted with NH2, the Lys side chain is also a linker suitable for binding due to the NH2; and RB2 is H. The stereochemistry of the compound of Brasun is as in formula 3 of claim 2.
In relation to the compound of claims 1-3, 5-9, 11-12 and 16, c(beta3homoAspdCysdbeta-AlaCys) as discussed above is such that each R is H; RA1 and RA2 are each a Cys side chain -CH2-SH; RB1 is the Asp side chain which is a hydrocarbon containing 1-12 carbons which is substituted with COOH, the Asp side chain is also a linker suitable for binding due to the COOH; and RB2 is H. The stereochemistry of the compound of Brasun is as in formula 3 of claim 2.
In relation to claim 13, Brasun teach that the compounds forms complexes with copper (abstract and Table 1).
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 RONALD T NIEBAUER whose telephone number is (571)270-3059. The examiner can normally be reached M - F 6:30 - 2:30 EST.
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RONALD T. NIEBAUER
Primary Examiner
Art Unit 1658
/RONALD T NIEBAUER/Examiner, Art Unit 1658
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