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 .
Priority
The present Application, filed June 9, 2023, is a national stage entry under 35 U.S.C. § 371 of International Patent Application No. PCT/US2021/065304, filed December 28, 2021, which claims priority to U.S. Provisional Patent Application No. 63/131,133, filed December 28, 2020.
Status of the Claims
In the amendment filed June 9, 2023, claims 1-3, 15, and 28 are amended (note that claim 28 is erroneously marked as “previously presented” in the claim listing). Claims 4-14, 16-27, 36, and 39 were previously canceled. Claims 1-3, 15, 28-35, 37-38, and 40-47 are currently pending.
Previous Rejections and/or Objections
The previous rejection of claim 15 is withdrawn due to amendment.
or
Any objections and/or rejections raised in the previous Office Action but not reiterated below are considered to have been withdrawn.
Claim Rejections - 35 USC § 112(d) – Necessitated by Amendment
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.
Claim 29 is rejected for failure to include all limitations of its base claim:
Claim 29 is 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. Amended claim 2, from which claim 29 depends, recites a compound of Formula II
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and specifies that R4 is one of twelve specified moieties. Claim 29 recites the compound of claim 2, wherein the compound of selected from the group consisting of twenty nine individual compounds. Of these, six have a methyl group, which is not one of the allowed R4 moieties of claim 2, at the R4 position. For example, the fifteenth listed compound of claim 29 is
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which has methyl at both R3 and R4 positions. Because claim 29 recites species that are outside the scope of amended claim 2, claim 29 fails to include all limitations of amended claim 2.
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.
Claim Rejections - 35 USC § 102 – Maintained in part
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 29 is anticipated by Pietrzik:
Claim 29 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by International Patent Application Publication No. WO2018161039 to Pietrzik et al. (hereinafter, “Pietrzik”).
As noted above, claim 29 recites twenty nine individual compounds, including
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which is also referred to in the instant specification as AO-02-45
Pietrzik teaches various compounds having anti-inflammatory, anti-cancer, and anti-bacterial activity (Abstract), such as macrolide-based compounds of Formula 2
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where the variable moieties are as described. Pietrzik Formula 2 has significant overlap with instant Formulae I and II. In a working example, Pietrzik teaches Compound E-77,
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a 2′-lipoate ester of azithromycin that is identical to the fifteenth listed compound of instant claim 29 (also referred to in the instant specification as AO-02-45), depending from claim 2. Pietrzik compound E-77 is thus a compound of instant claim 29.
Allowable Subject Matter
Claims 1-3, 15, 28, 30-35, 37-38, and 40-47 are allowed.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 ALEXANDER K SHOWALTER whose telephone number is (571)270-0610. The examiner can normally be reached M-F 9:00 am to 5:00 pm, eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey S Lundgren can be reached on (571) 272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER K. SHOWALTER/Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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