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
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.
Claims 21, 22 and 26-33 are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (CA 3032839 A1, Feb. 8, 2018).
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here.
RESPONSE TO ARGUMENTS
Applicant simply asserts that Cheng et al. teach a disulfide linker.
The examiner had stated “Regarding claim 23, CA teaches and equates the disulfide bridge and boronic ester from boronic acid and diol in [0075].” and “Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the boronic ester as the degradable linker in CA since CA teaches and equates the disulfide bridge and boronic ester from boronic acid and diol absent showing otherwise.”
Applicant failed to argue the examiner’s point (i.e., the boronic ester as the degradable linker in Cheng et al. would have been obvious).
Applicant asserts that a person of ordinary skill in the art does not enjoy a reasonable expectation that the alleged modification would be successful. Applicant further asserts that there is significant unpredictability the relevant field of art with no reasonable expectation success and that undue experimentation would be needed.
The examiner disagrees with applicant’s assertions.
Cheng et al. teach and equate the disulfide bridge and boronic ester from boronic acid and diol in [0075].” Thus, further utilization of the boronic ester from boronic acid and diol in lieu of the disulfide bridge would have been obvious to a person of ordinary skill in the art. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.”
There would be a reasonable expectation success and undue experimentation would not be needed.
Applicant further asserts “If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification.”. Again, a single reference (Cheng et al.) teaches and equates the disulfide bridge and boronic ester from boronic acid and diol and thus utilization of the boronic ester from boronic acid and diol would be expected to yield satisfactory result for its intended purpose.
CLAIM OBJECTION
Claims 23-25 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.
EXAMINER’S COMMENT
Amended claim 21 overcame ODP rejection.
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.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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