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 .
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
Claims 1-17 of R. Fabis, et al., US 18/263,637 (07/31/2023) are pending. Claims 1-8 and 10-17 are withdrawn as drawn to non-elected Groups. Claim 9 is under examination on merits and rejected as well Objected to.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group III (claim 9), with traverse, in the reply filed on 02/10/2026. Claims 1-8 and 10-17 drawn to non-elected Groups are withdrawn from consideration pursuant to 37 CFR 1.142(b).
Applicant’s Traversal
Applicant traverses on the ground that there are substantive distinctions between the technologies of WO2017046625A1 and the instant application. This argument is not persuasive because no matter what type of subject matter of WO2017046625A1 drawn to, it DOES teach a chelator EDTA-EDA-EDTA meeting each and every structural limitation of the Formula IV in claim 1. Regarding the solubility, the same compound would has the same properties including the solubility in the same solvent. Further, WO2017046625A1 also discloses another chelator EDTA-EDA-EDTA-EDA-EDTA (see WO2017046625A1 at page 13, Example 7) that has the same chemical structure as the product of the Example 2 in the instant specification. See specification at page 13, Example 2. Therefore, as discussed in the previous Office action that there is no unity of invention among the Groups. Thus, the Restriction Requirement is proper and is made as Final.
Claim Objections
Claim 9 is objected to on the ground that it is depending on a withdrawn claim. The objection can be overcame if rewritten in an independent form.
Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Improper Exemplary Claim Language
Claim 9 is rejected under 35 U.S.C. 112(b) as indefinite because the recitation of exemplary claim languages “such as” in both claim 1 and claim 9. The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Unclear Structure
Claims 9 is rejected under 35 U.S.C. 112(b) as indefinite because the structure of the claimed term R2 in the formula I of claim 1 is not clear.
Claims 9 is further rejected under 35 U.S.C. 112(b) as indefinite because the structure of the claimed term R3 in the formula IV of claim 1 is not clear, Claim1 recites the limitation of R3 as follows:
wherein R3 of the formulas above is selected either from the group comprising H, COOH, CH2-COOH and another molecule of formula I which is bound via R3-(CH2)n-R2
Herein, the structure of “another molecule of formula I which is bound via R3-(CH2)n-R2” is not clear because one ordinary skill does not know which group is bound by another molecule of formula I via R3-(CH2)n-R2, and/or how they can bound given the another molecule of formula I itself is R3 and it comprises R2?
Claim Rejections - 35 USC § 102
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 9 is rejected under 35 U.S.C. 102(a)(1)as being anticipated by WO2017046625A1 (2017)(“Cube”).
Cube teaches a multimeric chelator, these chelators are polycarboxylates, such as EDTA, DTP A, and the like, and they are connected via linkers, forming chains, the chelator chains can be bound to a solid phase via an ester-, thioester- or amide group of one terminal chelator. Cube at Abstract.
Cube teaches that after coupling of the chelator chains with a solid phase, the reaction product can be charged with metal ions, which can bind the desired target proteins. As Ni, Cu, Co, Zn, Fe, Eu, Sc are suitable for reversible protein binding, nickel and cobalt are preferred for purification of his-tagged proteins, while iron and alumina are preferred for the isolation of phosphoproteins. Cube at page 8, paragraph 2, line 1-6, emphasis added.
Cue teaches examples of the multimeric chelator, such as Example 5 chelator of EDTA-EDA-EDTA which is prepared by a reaction of ethylene diamine (1.67 mmol) with EDTA dianhydride (3.33 mmol). Cue at page 12, Example 5, Synthesis of EDTA-EDA-EDTA. Thus, the EDTA-EDA-EDTA has a chemical structure as indicated below.
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The multimeric chelator EDTA-EDA-EDTA maps the Formula IV in the instant claim 1 as:
R1 is the Formula II, wherein n is 2
and
R 3 is H;
Which meets each and every limitation of the structure requirement of the Formula IV in the instant claim 1. Regarding the solubility, the same compound would has the same properties including the solubility in the same solvent. Where the claimed and prior art products are identical or substantially identical in composition to a claimed composition, a prima facie case of either anticipation or obviousness has been established subject to Applicant’s rebuttal. MPEP § 2112.01(I) (citing In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (holding that a prior art structure anticipated a claimed structure even though a claimed functional recitation was not specifically taught in the prior art reference because applicant had failed to show that the prior art did not possess the functional characteristics of the claims)).
Cue teaches to couple the synthesized multimeric chelator EDTA-EDA-EDTA on a solid phase that is amine agarose. Cue at page 13, paragraph 1-2, Example 5.
Cue teaches to load metal ions onto the solid phase bound multimeric chelator EDTA-EDA-EDTA. Cue at page 15, Metal Loading of the Resin.
Per Example 12, Cue also teaches to use the solid phase bound multimeric chelator EDTA-EDA-EDTA to purify a his-tagged GFP (green fluorescent protein) and teaches that the solid phase bound multimeric chelator EDTA-EDA-EDTA has a protein binding capacity of 84 mg/ml. Cue at page 16, Example 12, Purification of 6xhis-GFP with aminopolycarboxylic acid resins. Thus, Cue teaches a modified multimeric chelator EDTA-EDA-EDTA that comprise a his-tag, which meet each and every limitation of claim 9, therefore, claim 9 is anticipated.
Conclusion
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692