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
Applicant's election with traverse of Group 1 and the species of compound X7 in the reply filed on 2/12/26 is acknowledged. The traversal is on the ground(s) that the prior art does not teach compound X7. This is not found persuasive because instant claim 1 is much broader than compound X7 and the art cited in the restriction requirement and the art cited below show that claim 1 is not free of the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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Claims 4 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.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 filed 7/31/23 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because 37 CFR 1.98(b)(5) states that each publication listed must include the relevant pages of the publication. In the instant case, NPL references 1-2, 5-7 and 10 do not include any page numbers. Further, it appears that what was submitted for NPL references 1-2, 5-7 and 10 amounts to title pages or tables of contents which are not necessarily all of the relevant pages of the publication.
It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
The information disclosure statement (IDS) submitted on 5/8/25 and 1/29/25 have been considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code specifically page 38 lines 9 and 12. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-3, 5-9, 11-13 and 16 are 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 1 shows a formula and after the formula recites (1) as well as (1a). The structures of formula 1 and 1a (see instant specification page 2) are not the same. The claim is confusing because it shows a single formula yet refers to both (1) and (1a). It is not clear if claim 1 is intended to be limited to formula 1a. It is not clear if claim 16 is a proper dependent claim. None of the dependent claims clarify the claim scope.
Claim 1 refers to C1-4-alkyl or phenyl is substituted by one or more substituents independently selected from and then recites a list. Claim 1 refers to a 5- to 10-membered heterocycle of the cyclic hydrocarbon moiety may optionally be substituted by one or more substituents selected from and then recites a list. Claim 3 refers to substituted by one or more substituents independently selected from and then recites a list. With respect to the lists recited above, none of them include the word ‘or’ or ‘and’ between the last 2 options. As such, it is not clear if the groups are open or closed.
The 4th to last line of claim 8 recites ‘alkyis’. The meaning of this term is unclear. It is unclear if a word in misspelled or if a space is missing.
Although unclear, the claims have been given the broadest reasonable interpretation consistent with the specification.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-3, 5-8, 11-13 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brasun et al. (NPL citation 3 of IDS 7/31/23; ‘Brasun’).
Brasun teach 14-membered cyclic tetrapeptides containing histidine and lysine side chains. (abstract). Brasun shows the structure of a compound in figure 1:
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Brasun teach that the compound forms complexes with copper (abstract and Table 1).
In relation to the compound of claims 1-3, 5-8, 11-12 and 16, the compound of Brasun is such that each R is H; RA1 and RA2 are each a His side chain which is a C1-3-alkyl (CH2) substituted with a 5-10 membered heterocycle specifically imidazolyl (-CH2-imidazolyl); 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 claim 13, Brasun teach that the compound forms complexes with copper (abstract and Table 1).
Claim(s) 1-3, 5-9 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sarfati et al. (NPL citation 8 of IDS 7/31/23; ‘Sarfati’).
Sarfati teach compound 2b (page 256 1st column):
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288
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In relation to the compound of claims 1-3, 5-9 and 11, the compound of Sarfati is such that 2 of the Rs are H and 2 of the Rs are -CH3; RA1 and RA2 are the Phe side chain which is a C1-3-alkyl (CH2) substituted with a cyclic hydrocarbon specifically phenyl (-CH2-phenyl); RB1 and RB2 are H. Since RB1 and RB2 are H, the stereochemistry is either of formula 2 or 3 of claim 2.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melissa Fisher can be reached at 571-270-7430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RONALD T. NIEBAUER
Primary Examiner
Art Unit 1658
/RONALD T NIEBAUER/Examiner, Art Unit 1658
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