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, claims 1-15 in the reply filed on 12/31/25 is acknowledged.
Claims 16-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/31/25.
Likewise, applicant’s election of the species SBT6P identified structurally as:
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is acknowledged. Applicants stated that claims 1-15 read on this species, however the examiner notes that this species only reads on claims 1-6.
This species is seen to be free of the art. As such, the search and examination has been expanded to include compounds having the formula:
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which reads on the present compounds wherein the structure is:
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and each of the R-groups is C(O)R’ and R’ is aliphatic – being a methyl group. It is noted that claims 1-4, 8-10, and 12-14 read on this elected species.
MPEP 803.02 III discusses practice for examining claims where an election of species is made in a Markush claim MPEP notes that following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability. Note that where a claim reads on multiple species, only one species needs to be taught or suggested by the prior art in order for the claim to be anticipated or rendered obvious. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298, 92 USPQ2d 1163, 1171 (Fed. Cir. 2009)(the entire element is disclosed by the prior art if one alternative in the Markush group is in the prior art).
If the Markush claim is not allowable, the provisional election will be given effect and examination will be limited to the Markush claim and claims to the elected species, with claims drawn to species patentably distinct from the elected species held withdrawn from further consideration. As an example, in the case of an application with a Markush claim drawn to the compound X-R, wherein R is a radical selected from the group consisting of A, B, C, D, and E, the examiner may require a provisional election of a single species, XA, XB, XC, XD, or XE. The Markush claim would then be examined fully with respect to the elected species and any species considered to be clearly unpatentable over the elected species.
If on examination the elected species is found to be anticipated or rendered obvious by prior art, the Markush claim and claims to the elected species will be rejected, and claims to the nonelected species will be held withdrawn from further consideration.
If the examiner determines that the elected species is allowable over the prior art, the examination of the Markush claim will be extended. If prior art is then found that anticipates or renders obvious the Markush claim with respect to a nonelected species, the Markush claim shall be rejected; claims to the nonelected species would still be held withdrawn from further consideration. The prior art search will not be extended unnecessarily to cover all nonelected species, and need not be extended beyond a proper Markush grouping.
Should applicant, in response to a rejection of a Markush claim, overcome the rejection by amending the Markush claim to exclude the species anticipated or rendered obvious by the prior art, the amended Markush claim will be examined again. The examination will be extended to the extent necessary to determine patentability of the Markush claim. In the event prior art is found during this examination that anticipates or renders obvious the amended Markush claim, the claim will be rejected and the action can be made final unless the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP 706.07(a). Amendments submitted after the final rejection further restricting the scope of the claim may be denied entry if they do not comply with the requirements of 37 CFR 1.116. See MPEP 714.13.
As such, claims 7, 11, and 15 have been withdrawn as being drawn to a non-elected species. Likewise, the compounds claimed in claims 1-6, 8-10, and 12-14 which are not drawn to the elected compound or additional compound noted above have been withdrawn.
An action on claims 1-6 and 9-14 as it relates to application originally elected compound:
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and the additional compound
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where each R is C(O)CH3 is contained herein below.
Claims 7, 11 and 15-29 are withdrawn as being drawn to non-elected subject matter; and the portion of claims 1-6, 8-10, and 12-14 which do not read on the two examined compounds are withdrawn.
Claim Objections
Claim 1 is objected to as the group:
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in the definition for R is blurry. Appropriate correction is required.
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) 1-4, 8-10, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2015/112168.
‘168 discloses the compound:
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in example 1 which anticipates the present compounds wherein the structure is:
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and each of the R-groups is C(O)R’ and R’ is aliphatic – being a methyl group. It is noted that while claim 3 limits the aryl group; claim 4 limits the amino acid group; claim 10 limits the disaccharide; and claim 13 limits the aryl group – these claims do not require the groups to be these aryl/amino acid/disaccharide groups, and thus the claims are properly rejected.
Conclusion
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.
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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