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 .
Priority
Applicant note within the arguments filed March 16, 2026 that the Priority Document was retrieved by the Office on March 10, 2022 and has not yet acknowledged the receipt in any of the previously mailed Office Actions. However, the priority document is not present in the record as of the mailing of this Office Action. It is noted that the Application Data Sheet filed March 9, 2023 does not indicate that Applicant claims foreign priority.
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed March 16, 2026, with respect to the rejection(s) under 35 U.S.C. 102(a)(1) in view of Sato et al. (cited in the previous Office Action) have been fully considered but they are not persuasive. Applicant has amened claim 1 to recite the structure limitations from newly canceled claim 3 and to additionally recite a group of amino acid moieties. While the rejection within the previous Office Action relied upon the teaching of Example I-6 of Sato having a methionine group (not recited within the newly amended group), various other examples of Sato teach exemplary structures which read on the claimed formula 1 and are fully addressed within the new rejection below.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato et al. (JP-2001226345-A, English translation provided for citations, hereinafter referred to as "Sato").
As to Claim 1: Sato teaches compounds including esters of N-(meth)acryloyl-amino acids containing ether bonds ([0001]) which may have the structure represented by formula (I) (see foreign document pg. 2):
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wherein R1 is H or a methyl group (i.e., an acryl group or alkylacryl group), X is a residue of an amino acid (i.e., an amino acid moiety), and R2 may be (CH2CH2O)n wherein n is an integer of 1 to 5 ([0009]) (i.e., a polyether segment having an end comprising oxygen). Sato further teaches an exemplary structure having the formula (see pg. 5 of foreign reference):
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wherein r1 = H, r2 = CH2OH (i.e., serine, an amino acid), and r3 = (CH2CH2O)3CH3 (entry I-83 of table on pg. 7 of foreign reference), which anticipates the claimed compound. Sato teaches various other exemplary compounds having the same r1 and r3 values as the above, differing in the identity of the amino acid moiety which further reads on the breadth of the claimed group of amino acid side chains (e.g., at least examples I-132 (lysine), I-114 (tyrosine), I-151 (aspartic acid)).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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