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 .
Status of Claims
Claims 1, 3-4, and 7-19 are pending in the instant application.
Claims 2 and 5-6 have been canceled.
Claims 9-19 stand withdrawn.
Withdrawn Objections/Rejections
Applicant’s amendment is sufficient to overcome the rejection of Claims 1, 3 under 35 U.S.C. 103. This rejection is hereby withdrawn.
Applicant’s traversal of the rejection of Claims 7-8 under 35 U.S.C. 103 is found persuasive. In particular, Applicant notes at Page 5, Third Paragraph of the remarks filed February 23rd, 2026, that despite the Bulgar reference teaching administration of methoxyamine in non-small lung cell cancer overcomes resistance to pemetrexed in UDG+/+ non-small-cell lung cancer cells, no teaching suggests the inhibition of UDG by administration of ATA in combination with pemetrexed in a colorectal cancer cell. This rejection is hereby withdrawn.
The following rejections are necessitated by amendment:
Claim Rejections - 35 USC § 103
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 1 and 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Li et. al. (“First-In-Class Small Molecule Inhibitors of the Single-Strand DNA Cytosine Deaminase APOBEC3G”, ACS Chem. Biol., 2012, 7, 506-517; cited in non-final rejection mailed October 21st, 2025; hereinafter referred to as Li) in view of McGeer et. al. (US 2015/0290155 A1; hereinafter referred to as McGeer).
As noted in the non-final rejection mailed October 21st, 2025, at Page 508, Second Column, Second Paragraph and at Page 509, Table 1, entry MN1, Li teaches that aurintricarboxylic acid (ATA) is an inhibitor of UDG.
Li does not teach inhibition of UDG in a colorectal cancer cell.
At Page 8, Paragraph 0112, McGeer teaches the effect of ATA on the growth of the human colorectal cancer cell line SW 480 was assessed. At Page 8, Paragraph 0113, McGeer teaches ATA inhibited the growth of human colorectal cancer cells.
The prior art is silent regarding “the UDG is maintained in a destabilized, open precatalytic glycosylase conformation that prevents active site closing for functional DNA binding and nuclease flipping needed to excise damaged bases binding in DNA” as recited at Claim 1, “ATA binds free UDG prior to DNA binding” as recited at Claim 3, and “ATA promotes destabilization of UDG” as recited at Claim 4. However, these limitations will naturally flow from the method made obvious by the prior art, since the same compound, ATA< is being administered to the same target SW 480 colorectal cancer cells. In other words, products of identical or similar composition cannot exert mutually exclusive properties when administered under the same or similar circumstances.
In other words, even though the prior art is silent regarding the aforementioned limitations, by practicing the method made obvious by the prior art by administering ATA to SW 480 colorectal cancer cells, one will also be practicing the aforementioned limitations, even though the prior art was not aware of it.
Apparently, Applicant has discovered a new property or advantage (“the UDG is maintained in a destabilized, open precatalytic glycosylase conformation that prevents active site closing for functional DNA binding and nuclease flipping needed to excise damaged bases binding in DNA”, “ATA binds free UDG prior to binding” and “ATA promotes destabilization of UDG”) of the method made obvious by the prior art.
MPEP 2145, II. states, “The fact that Applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art, cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60.
Allowable Subject Matter
Claims 7-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Claims 1 and 3-4 are rejected.
Claims 7-8 are objected to.
No claim is allowed.
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.
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/D.J.B./Examiner, Art Unit 1624
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624