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 .
The Amendment filed 7/13/2026 has been received, entered into the record, and carefully considered. The following information provided in the amendment affects the instant application by:
Claims 1 and 6 have been amended.
No claims have been added.
Claims 2-3 and 7-15 have been canceled.
Remarks drawn to rejections of Office Action mailed 3/11/26 include:
Claim objection: which has been overcome by applicant’s amendments and has been withdrawn.
102(a)(1) rejection: which has been overcome by applicant’s amendments and has been withdrawn.
Election/Restrictions
The claims were previously limited to a species election wherein applicants elected the compound SBT6P having the formula:
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which is seen to be free of the art. Claims 1 and 4-6 read on this compound.
The examiner had previously expanded the search to compounds having the formula:
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which are no longer embraced by the scope of the presently amended claims. As such, the examiner is now expanding the search to include the compounds:
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which is a 1-ester of L-phenylalanine with D-mannitol. The examiner has also expanded the search to include the following:
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.
An action on the merits of claims 1 and 4-6 is contained herein below. Claims 16-29 remain withdrawn as being drawn to a non-elected invention. The text of those sections of Title 35, US Code which are not included in this action can be found in a prior Office action.
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.
Claim(s) 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2020/234262.
‘262 discloses the compound:
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as compound 2 (see page 6 and 42) which anticipates the present compounds wherein the core is
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as in claim 1 where n is 1; or
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as in claim 5 where n is 1; and would anticipate the species
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in claim 6 where R is an amino acid group from phenylalanine.
Claim(s) 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lohith et al. (European Journal of Medicinal Chemistry, vol. 41, 2006, pp 1059-1072).
Lohith discloses the compound:
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which reads on the present compounds wherein the core is
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where n is 4 and R is H or C(O)R’ where R’ is an amino acid group from phenylalanine. See scheme 2 and table 2 for named compound 1-O-L-phenylalanine-D-mannitol. It is noted that this is not the only species which would anticipate the present compounds in this document.
Conclusion
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 TRAVISS C MCINTOSH III whose telephone number is (571)272-0657. The examiner can normally be reached Monday-Friday 9AM-5:30PM EST.
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.
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/TRAVISS C MCINTOSH III/Primary Examiner, Art Unit 1693
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