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 .
CONTINUING DATA
This application is a 371 of PCT/US2021/052550 09/29/2021
PCT/US2021/052550 has PRO 63/086,546 10/01/2020
This office action is in response to Applicant’s amendment submitted April 10, 2026. Claims 1, 4, 6-15, 17-18, and 22-23 are pending.
Applicant's election with traverse of Group I, claims 1-7, 14, and 21-23 in the reply filed on November 10, 2025 is acknowledged. Claims 8-13, 15, and 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 10, 2025. As the claims now stand, the technical feature linking all the groups is a hexose phosphate combined with or conjugated to a drug. Such conjugates are known, as taught by Loibner or Sadamoto, so the technical feature linking the inventions is not a special technical feature. A combination of glucose-6-phosphate and Fosfomycin is also known, as taught by Hirschl (cited on the IDS filed February 23, 2026).
Claim 1 is not yet in condition for allowance, so withdrawn claims 8-13, 15, and 17-18 are not eligible for rejoinder. Assuming that claim 1 will be amended to overcome the rejection made in this office action, it is noted that claims 8-13 and 17-18 do not recite all the limitations of claim 1 (or an allowable claim) and so would not be rejoined in their current form. Claim 15 requires all the limitations of claim 1 and so will be rejoined when claim 1 is in condition for allowance.
The objections to the specification and drawings are withdrawn in view of the replacement specification and drawings submitted April 10, 2026.
The rejection of claims 1-5 and 21 under 35 U.S.C. 112(b) is withdrawn because structures were corrected and claims 5 and 21 are canceled.
The rejection of claims 1-7 and 21-23 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), is withdrawn in view of Applicant’s amendment to limit the scope of fluorinated hexose phosphates and drugs.
The rejection of claim(s) 1 under 35 U.S.C. 102(a)(1) as being anticipated by Loibner is withdrawn because Loibner does not teach the recited drugs.
The rejection of claim(s) 1-2 under 35 U.S.C. 102(a)(1) as being anticipated by Sadamoto is withdrawn because Sadamoto does not teach the recited drugs.
Claim Objections
Claims 22 and 23 are objected to under 37 CFR 1.75 as being substantial duplicates of claims 6 and 7. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
The following new rejections were necessitated by Applicant’s amendment.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1 and 4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 recites a compound “4-deoxy-4-fluoroglucose phosphate of formula (E), but formula (E) is not 4FG6P because it is fluorinated at the 2-position, not the 4-position. Claim 4 depends from claim 1 and includes the same limitation by reference.
Claim 6 and 22 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 6 and 22 depend from claim 1 and recite that the drug is conjugated to 3-fluoro-glucose-6-phosphate. Claim 1 does not encompass 3-fluoro-glucose-6-phosphate, so claims 6 and 22 fail to include all the limitations of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art for claim 14 is Sadamoto or Lee. Sadamoto teaches an antibiotic conjugate with a fluorinated hexose phosphate, but does not teach that the antibiotic is linezolid. Lee teaches a conjugate of linezolid with a saccharide (see Figure 1), but the saccharide is not a fluorinated hexose phosphate.
The closest prior art for claims 1, 4, 6-7, and 22-23 is Loibner or Sadamoto, which were discussed above.
Conclusion
Claims 1, 4, 6, and 22 are rejected. Claim 14 is allowed. Claims 7 and 23 are objected to as depending from a rejected base claim.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAYLA D BERRY whose telephone number is (571)272-9572. The examiner can normally be reached 7:00-3:00 CST, M-F.
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 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAYLA D BERRY/Primary Examiner, Art Unit 1693
Prosecution Insights