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 Office action is responsive to Applicant's Response to Election/Restriction, filed Nov. 10, 2025. As filed, claims 1-2, 7-25 are pending in the instant application.
Priority
This application filed 02/08/2023 is a National Stage entry of PCT/CN2022/090878 , International Filing Date: 05/05/2022 claims foreign priority to 202110489039.4, filed 05/06/2021; claims foreign priority to 2021110059560.9, filed 01/19/2022.
Information Disclosure Statement
Applicants' information disclosure statements (IDS) filed on 5/01/2023 have been considered except where lined through. Please refer to Applicants' copy of the 1449 submitted herewith.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1, 2, 7-13, drawn to lipid compounds of formula (I) as recited in the claims in the reply filed on 11/10/2025 is acknowledged.
In response to election of species, the applicants elected the compound:
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The elected species corresponds to a compound of Formula I, wherein R1 is CH2CH2, R3 is phenyl substituted with n-butyl at the ortho position of R1; R2 is C9 alkyl, R4 is Cs alkyl; M1 is -C(O)O-, M2 is -C(O)O-, m is 7, n is 7, and R5 is CH2CH2OH; and indicated claims 1, 2, 7, and 9-13 read on both the elected group of invention and the elected species.
. The instantly elected species was searched and examined. It was determined that the elected species was free of the prior art. For this reason, the search and examination was expanded within the Markush-type claim and to consider additional species and subgenera within the generic formula I as instantly claimed in claim 1 wherein R5 is R5 is -C2 alkylene-Q, Q -OH ( i.e. CH2CH2OH), M1, M2 are each -C(O)O-; R1, R2 are C1-12 alkyl and R3 or R4 are C1-12 alkyl or phenyl, until a non-elected prior art species was found that anticipated or rendered obvious said claim.
Claims 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1, 2, 7-13 will be examined on the merits herein.
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 10-12 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.
Each claim recites the term “preferably” before introducing an additional limitation, which renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d) (explaining that exemplary claim language may lead to confusion over the intended scope of a claim).
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.
(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.
1.Claims 1, 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al Bioorganic & Medicinal Chemistry Letters (2018), 28(2), 117-121 (cited by Applicants in IDS).
The article by Wang teaches compound 10 on Scheme 2 page 20 which corresponds to the compound of claimed formula (I) wherein R1 is CH2, R3 is phenyl R2 is C2 alkyl, R4 is phenyl; M1 is -C(O)O-, M2 is -C(O)O-, m is 1, n is 1, and R5 is -C2 alkylene-Q, Q -OH ( i.e. CH2CH2OH) instant claim 1.
Regarding instant claim 7, the R2 (CH2) is substituted at end position by R4 (alkyl).
Show below is the compound of prior art as displayed in Registry data base:
RN 51992-85-9 CAPLUS CN Glycine, N-(2-hydroxyethyl)-N-[2-oxo-2-(phenylmethoxy)ethyl]-,phenylmethyl ester (CA INDEX NAME)
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Therefore, the prior art teaches the limitations of instant claims.
2. Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) and 102 (a)(2) as being anticipated by WO 2017 /049245 A2, March 2017 by Benenato et al (“the ‘245 publication”; cited by Applicants in IDS).
The ‘245 publication teaches on [0016] compounds of formula IId
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in which when variables n is 2-4, R’ is C1=12 alkyl, R’ is C1-12 alkyl, R2 and R3 are each C1-12 alkyl or alkenyl , R5, R6 are C1 alkyl and is 5 are encompassed in claimed formula I wherein R1, R2, R3, R4 are each C1-12 alkyl or C2-12 alkenyl; M1 and M2 are each -C(O)O, m, n are 3-7, and R5 is -C1-12 alkylene-Q, Q -OH ( i.e. CH2CH2OH); instant claim 1.
Compounds 51-53 on page 32 of the cited reference correspond to claimed compounds of formula I in which variables R1, R2 and R3,m R4 are each C1-5 alkyl; M1 and M2 are each -C(O)O-, m, n are 3-7, and R5 is -C2-alkylene-Q, Q -OH,
-CH2CH2OH of instant claim 1.
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Regarding instant claim 7, the R2 (C1-2 alkyl) is substituted at end position by R4 (alkyl).
Therefore, the prior art teaches the limitations of instant claims.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 2, 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017 /049245 A2, March 2017 by Benenato et al (“the ‘245 publication”; cited by Applicants in IDS).
Regarding instant claim 1, the ‘245 publication teaches on [0016] the compounds of formula IId:
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in which when variables n is 2-4, R’ is C1=12 alkyl, R’ is C1-12 alkyl, R2 and R3 are each C1-12 alkyl or alkenyl , R5, R6 are C1 alkyl and is 5 are encompassed in claimed formula I wherein R1, R2, R3, R4 are each C1-12 alkyl or C2-12 alkenyl; M1 and M2 are each -C(O)O, m, n are 3-7, and R5 is -C1-12 alkylene-Q, Q -OH ( i.e. CH2CH2OH).
Compounds 51-53 on page 32 of the cited reference correspond to claimed compounds of formula I in which variables R1, R2 and R3,m R4 are each C1-5 alkyl; M1 and M2 are each -C(O)O-, m, n are 3-7, and R5 is -C2-alkylene-Q, Q -OH,
-CH2CH2OH of instant claim 1.
Regarding instant claim 7, the R2 (C1-2 alkyl) is substituted at end position by R4 (alkyl).
Regarding instant claims 2, 8-12 the 245 publication teaches on [00134] the compounds 62-64 shown below which are structurally similar to compounds of formulae (I)- (IV) of instant claims in which variables R2 is C1-10 alkyl, and R3 in formula I is phenyl substituted by alkyl (instant claim 2), R4 is C1-10 alkyl; M1 and M2 are each -C(O)O-, m, n are 6-7 and R5 is -C2-alkylene-Q, Q -OH, -CH2CH2OH (instant claim 12), R6 is C1-12 alkyl, t is 1 or 2, substituted at meta- and or /para position of benzene ring (instant claims 8-11); variable R1 in claimed formulae (I)-(IV) is C1- 12 alkyl group while for the compounds of prior art is a bond.
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Regarding instant claim 13, as shown below in the table for facile comparison, the compound 62 of the prior art by ‘the 245 publication share the same core structure with instantly claimed compound SW-II-134-I disclosed in the instant claim 13, both are lipids and can be used as therapeutic agents and/or prophylactics such as RNA are useful in the delive1y of therapeutic and/or prophylactics to mammalian cells or organs to, for example, regulate polypeptide, protein, or gene expression- same utility as instant application.
Prior art compound 62
Compound SW-II-134-I (instant claim 13)
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The compound 62 (and compounds 63-64) taught by the cited prior art differs from the instant claimed compound of formula (I)-(IV) by a methylene at the same loci: variable R1 in formula (I) is methylene group while for the compound of prior art is a bond.
"Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds. For example, a prior art compound may suggest its homologs because homologs often have similar
properties and therefore chemists of ordinary skill would ordinarily contemplate making them to try to obtain compounds with improved properties."
The predecessor to the Federal Circuit held several times that structurally similar compounds are obvious over one another. In re Jones, 162 F.2d 638 (CCPA 1947) (Absent unexpected results, one of skill in the art would expect compounds that differ in only the position of a substituent to possess similar chemical and physical properties.); In re Payne, Durden, and Weiden, 606 F.2d 303, 203 USPQ 245, 254-5 (CCPA 1979) (An obviousness rejection based on similarity in chemical structure and function entails motivation of one skilled in the art to make the claimed compound with an expectation that compounds similar in structure will have similar properties.
When prior art compounds essentially "bracket" the instantly claimed compound, one of ordinary skill in the art would clearly be motivated to make the claimed compound.); In re Hass and Susie, 60 USPQ 548, 551 (CCPA 1944) (“[I]n order to be patentable, novel members of a homologous series of compounds must possess some unobvious or unexpected beneficial properties not possessed by homologous compounds disclosed in the prior art.")
The motivation to make a structural modification stems from the fact that a person having ordinary skill in the art would expect that the compounds could be prepared by the same method as taught by the prior art and have the same utility as the compounds taught by the prior art. In the interest of generating additional compounds, a person having ordinary skill in the art would seek to make additional compounds that are most closely related to compounds specifically taught by the prior art that have already been demonstrated to have therapeutical activity.
In the instant case, as discussed supra, the prior art by the ‘245 publication teaches compounds (51-52) which fall within claimed formula I of claims 1 and 7, and structurally similar compounds (62-64) to claimed formulae II-IV of clams 2, 8-13; the structural modification – i.e. a methylene group at same structural loci- falls under the well-established doctrine of homology, which assumes that homologous compounds are likely to have similar properties. As such, the instantly claimed compounds are unpatentable absent a showing of unexpected results.
Therefore, the claimed invention as a whole is prima facie obvious over the teachings of the prior art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 7-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-16 of copending Application No. 19102638. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims generically overlap with applicants’ instantly claimed invention, both claim compounds of formula I and the ‘638 application provides in claim 16 the compound which teach instantly claimed elected species.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 7-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 36- 40, 52-55 of copending Application No. 19123047. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims generically overlap with applicants’ instantly claimed invention, both claim compounds of formula I and the ‘047 application provides in claim 50 the compound which teach instantly claimed elected species.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Relevant prior art:
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: WO 2001052900 by Achilefu, 07/26/2002.The ‘900 publication teaches on page 32, example 9 compound of structure shown below as displayed in Registry data base, that anticipate compound in instant claim 1.
RN 1449571-44-1 CAPLUS
CN Glycine, N-[2-(1,1-dimethylethoxy)-2-oxoethyl]-N-(2-hydroxyethyl)-,
phenylmethyl ester (CA INDEX NAME)
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Conclusion
Claims 1, 2, 7-13 are rejected. Claims 14-25 withdrawn from further consideration.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANA MURESAN whose telephone number is (571)-270-7587. The examiner can normally be reached on Monday through Friday, 8:30 am to 5:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692