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 2/17/26 has been received, entered into the record, and carefully considered. The following information provided in the amendment affects the instant application by:
Claims 1-6 and 9-21 have been amended.
Claim 67 has been added.
Claims 23-66 have been canceled.
Remarks drawn to rejections of Office Action mailed 9/25/25 include:
112 2nd paragraph rejections: which have been overcome by applicant’s amendments and have been withdrawn.
102 rejections: which have been overcome by applicant’s amendments and have been withdrawn.
An action on the merits of claims 1-22 and 67 is contained herein below. 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.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/163,590, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The ‘590 application fails to provide support for the full scope of the compounds claimed – for example, various species such as:
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were not present in the priority documents and first appeared in the PCT/US2021/064209 application filed 12/17/2021 and published as WO2022/133314. As such, applicants are seen to be entitled to a filing date of 12/17/2021 – the filing date of the PCT/US2021/064209 application.
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.
Claims 1-22 and 67 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 provides that at least one of R4-7 is A, J, Q, or X. However, applicants have deleted “A” as an option further in the claim, and thus it is unclear what applicants are referring to in the last line where the R-groups are optionally “A”. Removing the “A” group from the last line would overcome this rejection.
Claim 15 is confusing as the claim states that at least one of R4-7 “is or -Q”. As such, it is unclear if there was something before the “or” that was intended or if the “or” should have been removed with the “A” in the amendment filed 2/17/26. The examiner believes the “or” should be deleted.
Claim 67 is indefinite as the compound depicted structurally as:
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is listed twice; once as the 1st compound and the other is the 9th compound. It is unclear why this compound was listed twice.
All claims which depend from an indefinite claim are also indefinite. Ex parte Cordova, 10 U.S.P.Q. 2d 1949, 1952 (P.T.O. Bd. App. 1989).
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)(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(s) 1-15, 17-22, and 67 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 11,292,765.
‘765 discloses the compound in example 11 which is a 4-hemimalonate of 4-OH-DiPT. This would be seen to have the structure:
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This would read on the present compounds where R9 and R10 are both C3 alkyl; R1, R2, R5, R6, and R7 are H; R8 is CH2 where n is 2; R4 is the group Q where R15 is C1 alkylene. This is seen to be the same as the 1st (and 9th) compound claimed in claim 67.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-13, 16-22, and 67 are rejected under 35 U.S.C. 103 as being unpatentable over US 11,891,360.
The claims of the present application are drawn to various glycosylated indoles.
‘360 teaches various glycosylated indoles having a very similar core – for example compounds in figures 4d and 5d comprise structures:
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and
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where R3a and R3b therein are defined as H, alkyl, aryl, or acyl group. These compounds would read on the present compounds where R1, R2, R4, R5, and R7 are H; R8 is CH2 where n is 2; R6 is the group X wherein X is glucose. What they do not exemplify are compounds where one of R3a or R3b are a C2-6 alkyl.
However, it would have been obvious to one of skill in the art at the tome of the invention to modify the compounds of ‘360 by providing for a C2-6 alkyl group at one of R3a or R3b therein as this suggestion is embraced by the teachings therein. As noted above, ‘360 teaches their R3a or R3b groups can optionally be a C1-6 alkyl. Thus it would have been obvious to modify the compounds of the art in a manner suggested or embraced by the same to find a new compound having the same purpose.
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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