DETAILED ACTION
Status of the Claims
Claims 1-15 are currently pending and are the subject of this Office Action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/28/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 2 and 14 are objected to as being dependent upon rejected base claims, but would be free from the prior art if rewritten in independent form including all of the limitations of the base claims and any intervening claims. Appropriate correction is required.
Claim Rejections – 35 U.S.C. 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 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.
Faucher et al.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Faucher et al. (J. Med. Chem., 2004, 47:18-21).
Regarding claim 1, Faucher discloses a compound represented by formula (I):
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,
for example, those in the right column of Table 1, wherein (B) is a phenyl group with Y=Y1=CH with R3’=H, (Linker) is a covalent bond, affinity tag (A) is covalently bound to the phenyl group varies among Entries 14-25, n=0, and R2’ and R2’’ are each H.
Newlander et al.
Claims 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Newlander et al. (J. Org. Chem., 1997, 62:6726-6732).
Regarding claims 12-13, Newlander discloses a compound represented by formula (II):
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for example, compound 24 on p. 6728, wherein (B) is a phenyl group with Y=Y1=CH with R3’=H, (Linker) is a covalent bond, affinity tag (A) is
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covalently bound to the phenyl group, n=1, R1’=R1’’=R2’=R2’’=H, and R4’=R4’’=CH3.
Wang et al.
Claims 3-11 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (Org. Lett., 2019, 21:719−723).
Claims 3 and 15 recite eDELs, which are generated from the methods of claims 2 and 14, respectively, and are therefore product-by-process claims. Note that as per MPEP § 2113, “product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”. The same MPEP section states that “‘even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the present case, the process steps imply the structural limitations as shown in, for example, Fig. 2B-2:
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Wang teaches several acrylamide-type structures that are encompassed by this formula, such as those listed in Tables 1 and 2, and these products meets all of the structural limitations of the claimed product (see above) except for the product-by-process limitations and thus would either anticipate or render obvious the claimed composition comprising activated eDELs set forth in claims 3 and 15. Here, Applicants’ claims are drawn to activated eDELs (i.e., products), but are defined by various method steps that produce said eDELs (e.g. coupling formula I or II with a DEL to generate a mwDEL, purifying the mwDEL intermediate, unmasking the mwDEL to generate an activate eDEL, and purifying the activated eDEL) and, as a result, represent product-by-process claims. Thus, the specific process limitations of claims 2 and 14 do not distinguish the claimed invention from the prior art in accordance with MPEP § 2113. One of ordinary skill would expect the product to be the same no matter how it was synthesized and/or prepared.
Alternatively or in addition, a plurality of structures in Fig. 1A of the present disclosure represent eDELs from the prior art which could have reasonably been made by the methods of claims 2 and/or 14, thus anticipating the eDELs of claims 3 and 15. For example, Fig. 1A-4 could reasonably be made, wherein R1=CH3 and R2=H:
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Conclusion
No claims are allowed.
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/JEREMY C FLINDERS/
Primary Examiner, Art Unit 1684