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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Formula (I) [ML1(L2)m(L3)n]pQk and the species benzene bis-acetonitrile ruthenium dimethylamine chloride
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wherein M is Ru, L1 is benzene, L2 is acetonitrile, L3 is dimethylamine, Q is Cl-, m is 2,n is 1, p is 1 and k is 1; in the reply filed on January 16, 2026 is acknowledged. Additonally, in making the election of Formula (I) Applicant amended claim 1. However, the Examiner noted that via typographically error the amendment contained a strike through of “L3” and the proposed definitions thereof. During a telephone conversation with Sunil K. Sing on February 11, 2026 a provisional election was made without traverse to prosecute the invention of Group I, Formula (I) [ML1(L2)m(L3)n]pQk, claim 1, wherein “L3” is included, and the definitions thereof is -CH3, -N(CH3)2 or -OCH3. Affirmation of this election must be made by applicant in replying to this Office action.
Status of Claims
Claims 1, 37 and 38 are pending.
Claims 37 and 38 are rejected.
Claims 1 is allowed.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 38 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 38 recites the limitation “transition metal” for the formula set out in the claim. However, this is an incorrect description of the formula. It is suggested that applicant amend the claim to a more definite language; such as, “transition metal catalyst”.
Claim Rejections - 35 USC § 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 (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 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.
Claim(s) 37 is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Retrotope, Inc. (WO 2017/091279 A1).
The rejected claim covers, inter alia, a composition comprising one or more isotopically modified polyunsaturated lipids having an isotope predominantly at one or more bis-allylic positions, wherein the isotopically modified polyunsaturated lipids are prepared by the process of claim 1.
However, Retrotope discloses the following deuterated PUFAs obtained by their method on page 38:
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.
Also, stating that their embodiments relate to a composition comprising one or more isotopically-modified polyunsaturated lipids having an isotope predominantly at one or more allylic sites. (pp. 47, [0138]).
Applicant is reminded that claim 37 is claimed in a Product-by-Process format. MPEP §2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
It is well settled that the presence of process limitations in product claims, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to that product. The addition of a method step in a product claim, which product is not otherwise patentably distinguish over the prior art, cannot impart patentability to that old product." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1318 (Fed. Cir. 2006) (quoting In re Stephens, 345 F.2d1020, 1023 (CCPA 1965).
The PTO takes the following position with respect to Product- by-Process claims, As stated in ln re Thorpe, 777 F.2d 695, 697, 698,227 USPQ 964, 966 (Fed. Cir. 1985): 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 Examination, “the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221,223 (CCPA 1979). "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Additionally, once the Examiner establishes that a product, recited in terms of its process of making, is prima facie unpatentable due to anticipation, Appellants bear the burden of proving "that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." Id. at 698 (quoting In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).
Accordingly, applicant's claim is considered a product claim, and the process steps do not have any weight, if the product is known over prior art. In this case the product or composition is known from Retrotope. Therefore, the claim is anticipated by the prior art.
Claim Rejections - 35 USC § 102
Claim(s) 37 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fomich et al. (Full Library of (Bis-ally)-deuterated Arachidonic Acids: Synthesis and Analytical Verification, Chemistry Select, vol. 1, no. 15, 2016).
The rejected claim covers, inter alia, a composition comprising one or more isotopically modified polyunsaturated lipids having an isotope predominantly at one or more bis-allylic positions, wherein the isotopically modified polyunsaturated lipids are prepared by the process of claim 1.
However, Fomich discloses a composition of bis-allyl deuterated arachidonic acids in Fig. 5. (pp. 4763).
Applicant is reminded that claim 37 is claimed in a Product-by-Process format. MPEP §2113 reads, “Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.”
It is well settled that the presence of process limitations in product claims, which product does not otherwise patentably distinguish over the prior art, cannot impart patentability to that product. The addition of a method step in a product claim, which product is not otherwise patentably distinguish over the prior art, cannot impart patentability to that old product." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1318 (Fed. Cir. 2006) (quoting In re Stephens, 345 F.2d1020, 1023 (CCPA 1965).
Accordingly, applicant's claim is considered a product claim, and the process steps do not have any weight, if the product is known over prior art. In this case the product or composition is known from Fomich et al.. Therefore, the claim is anticipated by the prior art.
Allowable Subject Matter
Claim 1 is allowed.
Claim 38 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action>
The following is a statement of reasons for the indication of allowable subject matter: none of the prior art of record teaches or suggest a motivation for the method for isotopic modification of a polyunsaturated lipid comprised of: reacting the polyunsaturated lipid with an isotope-containing agent consisting of deuterium, tritium, and combinations thereof; and in a presence of a transition metal catalyst [ML1(L2)m(L3)n]pQk (as defined in claim 1), to obtain an isotopically modified polyunsaturated lipid having an isotope at one or more bis-allylic position.
Additionally, none of the prior art of record teaches or suggested motivation for the transition metal catalyst of [ML1(L2)m(L3)n]pQk (as defined in claim 1) in the prior art of record. Nor is there a teaching or suggested motivation for the transition metal catalyst of benzene bis-acetonitrile ruthenium dimethylamine chloride
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wherein M is Ru, L1 is benzene, L2 is acetonitrile, L3 is dimethylamine, Q is Cl-, m is 2,n is 1, p is 1 and k is 1.
The closes prior art is disclosed in the teaching of Retrotope, Inc. (WO 2017/019279). The prior art of Retrotope discloses a method for preparing isotopically modified of 1,4-diene systems from non-isotopically modified 1,4-diene. The method of Retrotope can be used to modify polyunsaturated lipids. In Retrotope the isotope-containing agents are deuterium and tritium. The catalyst of Retrotope are transition metal catalysts as follows:
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and
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. However, these catalyst differ from the catalyst of the instantly claimed invention in that they do not contain Formula (I) [ML1(L2)m(L3)n]pQk, with “L3”, wherein “L3” is defined as -CH3, -N(CH3)2 or -OCH3. Nor is there a teaching or suggestion in Retrotope to form a transition metal catalyst with “L3” as a substituent on the transition metal. It would not have been obvious to one of ordinary skill in the art before the effective filling date of the instantly claimed invention to prepare the catalyst of claim 1 and perform the claimed process with such catalyst.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Y. Goon can be reached at (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692