DETAILED ACTION
Claims 15-17, 19-21, 25, 27, 29-36 and 38 are currently pending in the instant application.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments/Amendment
Applicant’s amendments and arguments in a response filed 06/10/2026 have been fully considered in the application. Applicant has overcome
The 35 U.S.C. 112(b) rejection of claims 35-36 in view of Applicant’s amendment to the claims.
Regarding the 103(a) rejection of claims 15-17, 25, 27, 35-36 and 38 over Posaric, Applicant argues that Posaric only exemplifies preparation of compounds having deuterated alkanol groups. Applicant also argues that although Posaric teaches the various hydrogen atom signals of a claimed compound that can be obtained by 1H-NMT spectroscopy, this does not constitute a suggestion that the hydrogen atoms of the glycerol may be substituted by a deuterium and that one of ordinary skill of the art would assume only the alkanol moiety may be substituted by a deuterium atoms. Further, Applicant argues that p. 17 of Posaric only teaches compositions having the phosphatidyalkanol compound with a polar water miscible deuterated solvent and that using a different deuterated solvent may be of use. Posaric does not teach isotopic labelling of the phosphatidyalkanol itself would lead to any improvement. Finally, Applicant argues that Posaric only teaches compounds having a deuterated alkanol group and their preparation.
According to MPEP 2123, Section I states that “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).” Further, MPEP 2123, Section II teaches that Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).”
Posaric teaches phosphatidyethanol-homologues of formula
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in isotopically enriched form thereof (see p. 4) and that the compound of formula I may be isotopically enriched with deuterium, or any other suitable heavy isotope (see p. 5, lines 19-20). Further, Posaric teaches an isotopically enriched compound may, for example, advantageously be used as analytical reference by spiking samples, in which the not isotopically enriched compound is being quantified, with a known amount. The teachings on p. 17 of Posaric is used to show that signals of particular interest include three groups, which are olefinic signals, signals originating from hydrogens bound to the glycerol skeleton or signals originating from the hydrogens bound to the alkanol group. Posaric teaches that hydrogens bound to the glycerol skeleton (herein referred to as “HA1”, “HA2”, “HB”, “HC”), thus indicating these hydrogens as a group that may be considered together. Thus, deuterating the hydrogens bound to the glycerol skeleton would be considered one of three possible groups of hydrogen atoms signals.
According to Posaric, the compound of formula I may be isotopically enriched with deuterium and used as a reference material in MS or MS/MS analytical applications. Although Posaric teaches” non-limited examples include compounds in which the alkanol group, e.g. an ethanol group, is fully deuterated an compounds which comprise a plurality of 13C isotopes”, Posaric also teaches other hydrogen groups include olefinic signals and signals originating from hydrogens bound to the glycerol skeleton. MPEP 2143, Section I states that “When a person of ordinary skill is faced with “a finite number of identified, predictable solutions” to a problem and pursues “the known options within his or her technical grasp,” the resulting discovery “is likely the product not of innovation but of ordinary skill and common sense.” KSR, 127 S. Ct. at 1742. So too, “[g]ranting patent protection to advances that would occur in the ordinary course without real innovation retards progress.” Id. at 1741.”
Finally, Applicant argues that Zheng teaches deuteration of the ethyl head group, which is similar to the teaching of Posaric, and there is no motivation to modify any other hydrogens. However, Zheng is used to teach that the deuterated versions had been shown to provide greater accuracy as internal standards. As stated above, given that there are only a finite number of group of hydrogens to modify and that isotopically enriched compound may, for example, advantageously be used as analytical reference by spiking samples, one would be motivated to deuterate other hydrogen atoms in the compound to find further deuterated compounds for use as analytical references. Thus, the 103 rejections have been maintained.
Election/Restrictions
Applicant's election with traverse of Group I, drawn to claims 15-17, 19-21, 25, 27, 35-36 and 38, and election of species
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in the reply filed on 01/15/2026 is acknowledged.
Claims 29-34 remain 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 01/15/2026.
Applicants' elected species of
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does not appear allowable, therefore the search and examination of the claims has not been extended beyond the elected species (see the following 35 USC 103(a) rejection).
Claims 20-21 do not read on the elected embodiment and are therefore considered withdrawn claims. Since the elected embodiment is not allowable, subject matter not embraced by the elected embodiment is therefore withdrawn from further consideration. It has been determined the entire scope claimed is not patentable.
Information Disclosure Statement
Applicant's Information Disclosure Statements filed on 03/20/2026 has been considered. Please refer to Applicant's copies of the 1449 submitted herewith.
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.
Claims 15-17, 19, 25, 27, 35-36 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Posaric et al (see WIPO Pub No. 2014/178787, pub. 11/06/2014, cited in IDS filed 09/28/2023). Posaric et al teaches phosphatidyethanol-homologues of formula
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in isotopically enriched form thereof (see p. 4). Posaric et al teach specifically that the compound of formula I may be isotopically enriched with deuterium, or any other suitable heavy isotope (see p. 5, lines 19-20) and an isotopically enriched compound may, for example, advantageously be used as analytical reference by spiking samples, in which the not isotopically enriched compound is being quantified, with a known amount. The elected species in non-deuterated form is taught on p. 11
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. Posaric et al teaches isotopically enriched defined as in which one or several of the substitutable atoms carry the 2H-isotope of hydrogen instead of the more common naturally occurring 1H-isotope (see p. 16) and non-limiting examples of isotopically enriched compounds of formula I include compounds which comprise at plurality of 13C isotopes (see p. 19). Further Posaric et al teaches that NMR-signals, in particular but not limited to 1H-NMR signals, are generally more well suited for QNMR than corresponding compositions with preferable signs of phosphatidylalkanols for 1H-QNMR including but not limited to signals originating from hydrogens bound to the glycerol skeleton (herein referred to as “HA1”, “HA2”, “HB”, “HC” as well as signals originating from the hydrogens bound to the alkanol group, in particular those adjacent to the P-O-moiety (“Het”). The same reasoning is valid for other NMR detectable nuclei, including 13C - see p. 17, lines 6-27. Posaric et al exemplifies deuteration of the hydrogens bound to the alkanol group, in particular those adjacent to the P-O-moiety (see p. 29, lines 17).
Prior to the filing of the instant application, it would be obvious to one of ordinary skill in the art following the teachings of Posaric et al to deuterate other hydrogen atoms in the species
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, such as those corresponding to “HA1”, “HA2”, “HB”, “HC” since isotopically enriched compound may advantageously be used as analytical reference by spiking samples, in which the not isotopically enriched compound is being quantified, with a known amount of isotopically enriched compound. Posaric et al specifically teaches hydrogens bound to the glycerol skeleton as a modifiable group of hydrogens as NMR-signals, in particular but not limited to 1H-NMR signals, as generally more well suited for QNMR. Further, since Zheng (see Clinica Chimica Acta, 2011, Vol. 412, No. 15, p. 1428-1435, cited in IDS filed 09/28/2023) teaches markedly improved analytical accuracy in ESI-MS/MS when using deuterated PEth analogs over PProp – 18:1/18:1 as the internal standard (see p. 1434, last sentence of first full paragraph in 1st column), one of ordinary skill in the art would be motivated to modify the known compound of Posaric et al to produce further deuterated compounds for use as analytical references especially given that Zheng teaches the deuterated versions had been shown to provide greater accuracy as internal standards.
Conclusion
THIS ACTION IS MADE FINAL. 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 KAREN CHENG whose telephone number is (703)756-4699. The examiner can normally be reached M-F, 9AM-6PM PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan can be reached at 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KAREN CHENG/Primary Examiner, Art Unit 1623
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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