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 to Applicant*
The Examiner notes that the instant Office Action supersedes the Office Action mailed 13 April 2026. The time for reply restarts with the mailing of the instant Office Action.
Foreign Priority
The present application claims priority to the application, CN202211155404.9, with the effective filing date of 21 September 2022.
Claim Status
This Office Action is in response to Applicant’s Response to Restriction Requirement filed,
23 February 2026.
Applicant’s election of claims 1-5, 9-11, and 18-20 (drawn to a method of treating or preventing a tumor), a compound of Formula Va (
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), and disease of the liver in the reply filed on 23 February 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Claim 11 specifies a compound of Formula Vb (
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), which does not read on the elected species. Claim 19 specifies a compound of Formula Vc and lung cancer, which does not read on the elected species.
Claims 6-8 and 12-17 are canceled.
Thus, claims 1-5, 9-10, 18, and 20 are pending.
Claim Interpretation
As the preamble to claim 5 recites “a compound” instead of “a method,” the Examiner interprets claim 5 to be a method of treating of claim 4.
For clarity, the Examiner interprets “subject” of claims 1 to be a human or animal subject.
Additionally, claim 1 specifies preventing and/or treating tumor. Because the Applicant elected the disease of liver (i.e. a liver disease), the Examiner interprets claim 1 as a method of treating or preventing liver cancer. Lin (Cancer, 2019, 11(739), 1-23) teaches prevention of hepatocellular carcinoma, which accounts for 90% of primary liver cancer (page 2, paragraph 1). Lin further specifies that the prevention of hepatocellular carcinoma can be classified as primary, secondary and tertiary: primary prevention includes reduction of risk factor exposure and vaccine injection against hepatitis B, secondary prevention includes curative treatments and palliative treatments; and tertiary prevention inhibits the recurrence of liver cancer (page 2, paragraph 2). Additionally, Lin specifies that sorafenib is the first line treatment in advanced stage (portal invasion) and that when combine with radiotherapy may be used for prevention of recurrence after resection or ablation (page 2, paragraph 2). Mueller (J. Hepatolog., 2018, 68, 412-420) teaches small molecule inhibitors of hepatitis B virus and that nearly 25% of all chronic hepatitis B virus carriers develop primary hepatocellular carcinoma (page 541, column 2, paragraph 1). Mueller also teaches that small molecules with activity against hepatitis B virus have the following structures:
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(Figure 1, page 413). Fantacuzzi (Eur. J. Med. Chem., 2025, 281(117021), 1-14) teaches several series of combretastain analogs:
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(Figure 1, page 2), and Formula (I) is directed to analogs of combretastain A-4 (
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; Figure 1; page 2). Due to similarities in the RG7834 and RO0321 compounds and the combretastain analogs, it is reasonable to infer that the combretastain analogs would have activity against hepatitis B virus, and thus, would be able to prevent liver cancer. Thus, claim 1 is enabled for preventing a liver cancer tumor.
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.
1. Claims 1-5 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Yong 1 (CN105,566,100, published 2 Nov 2018, citations to translation; of record; see PTO-892 mailed 13 Apr 2026) in view of Yong 2 (U.S. Patent No. 11,033,519, issued 15 Jun 2021) and Pecyna (Biomol., 2020, 10(1111), 1-10).
Yong 1 teaches derivatives of combretastain A-4 (CA4), which have structure:
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(page 1, paragraph 4; page 2, paragraph 3). Yong 1 specifically teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which has the IUPAC name and structure: butan‐1‐aminium (2E)‐3‐(3‐hydroxy‐4‐methoxyphenyl)‐2‐(3,4,5‐trimethoxyphenyl)prop‐2‐enoate and
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2).
Regarding claim 1, Yong 1 fails to teach a method of treating liver cancer.
Yong 2 teaches styrene acid derivative of Formula (I)
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for treating liver cancer (column 1, lines 52-67). Yong 2 specifically teaches treating liver cancer in mice via related combretastain A-4 compound, DX1002, which is (E)-3-(2,3-dihydroxyl-4’- methoxylphenyl)-2-(3”,4”,5”-trimethoxylphenyl)-2-acrylic acid and has structure:
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(column 10, lines 1-5; column 10, lines 21-23; column 10, lines 60-61). Yong 2 additionally teaches that combretastain derivatives have antitumor properties but work best in combination with another drug (column 1, lines 41-45).
Pecyna teaches that combretastain-based compounds exert prominent anticancer activity alone but also exhibit distinct disadvantages: (1) isomerization from the (Z)-isomer to the less active (E) form during storage, administration, and metabolism, (2) low water solubility, and (3), non-selective targeting (page 14, paragraph 5). However, Pecyna then teaches solutions to the disadvantages: derivatives that preserve the core cis- relationship between the two aryl components, which then in turn preserves activity:
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and
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(page 16, paragraph 1; page 17, paragraphs 1- 2). Additionally, Pecyna teaches that inclusion of a methoxy moiety increases dissolution in water (page 17, paragraph 1).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to exemplify the compound of Yong 1 to treat liver cancer as taught by Yong 2 and Pecyna to arrive at the instantly claimed invention.
One of ordinary skill in the art would have been motivated to select the compound of Yong 1 to treat liver cancer as taught by Yong 2 and Pecyna, because:
-Yong 1 teaches derivatives of combretastain A-4 (CA4), which have structure:
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,
-Yong 1 teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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,
-Yong 2 teaches styrene acid derivative of Formula (I)
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for treating liver cancer,
-Yong 2 teaches treating liver cancer in mice via related combretastain A-4 compound, DX1002, which is (E)-3-(2,3-dihydroxyl-4’-methoxylphenyl)-2-(3”,4”,5”-trimethoxylphenyl)-2-acrylic acid and has structure:
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,
-Yong 2 teaches that combretastain derivatives have antitumor properties but work best in combination with another drug,
-Pecyna teaches that combretastain-based compounds exert prominent anticancer activity alone but also exhibit distinct disadvantages: (1) isomerization from the (Z)-isomer to the less active (E) form during storage, administration, and metabolism, (2) low water solubility, and (3), non-selective targeting,
-Pecyna teaches solutions to the disadvantages: that derivatives that preserve the core cis- relationship between the two aryl components which then in turn preserves activity:
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and
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, and
-Pecyna teaches that inclusion of a methoxy moiety increases dissolution in water.
Thus, one of ordinary skill in the art would have selected the compound of Yong 1 to treat liver cancer as taught by Yong 2 and Pecyna, and the results would be predictable.
Regarding claim 2, Yong 1 teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2), wherein the organic amine is n-butylamine.
Regarding claim 3, Yong 1 teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2), wherein the compound of Formula (I) is a compound of Formula (II):
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, wherein M is n-butylamine, R1 and R4 are hydrogen, R2 is hydroxy, and R3 is methoxy.
Regarding claim 4, Yong 1 teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2), wherein the compound of Formula (I) is a compound of Formula (III):
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, wherein M is n-butylamine, R1 is hydrogen, R2 is hydroxy, and R3 is methoxy.
Regarding claim 5, Yong 1 teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2), wherein the compound of Formula (I) is a compound of Formula (IV):
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, wherein M is n-butylamine, R2 is hydroxy, and R3 is methoxy.
Regarding claim 9, Yong 2 teaches the tumor is liver cancer (column 10, lines 1-5; column 10, lines 21-23; column 10, lines 60-61).
Regarding claim 10, Yong 2 teaches the tumor is liver cancer (column 10, lines 1-5; column 10, lines 21-23; column 10, lines 60-61) and Yong 1 teaches the teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2).
2. Claims 1-5, 9-10, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yong 1 (CN105,566,100, published 2 Nov 2018, citations to translation; of record; see PTO-892 mailed 13 Apr 2026) in view of Yong 2 (U.S. Patent No. 11,033,519, issued 15 Jun 2021) and Pecyna (Biomol., 2020, 10(1111), 1-10) as applied to claim 1-5 and 9-10 above, and further in view of Deng (Mol. Therapy¸2020, 28(1), 75-88) as evidenced by Brudno (JAMA¸2024 332(22), 1924-1935).
Yong 1 (CN105,566,100, published 2 Nov 2018, citations to translation; of record; see PTO-892 mailed 13 Apr 2026) in view of Yong 2 (U.S. Patent No. 11,033,519, issued 15 Jun 2021) and Pecyna (Biomol., 2020, 10(1111), 1-10) are applied as discussed in the 35 U.S.C. 103 rejection above.
Regarding claim 18, while the combination of Yong 1, Yong 2, and Pecyna teaches a method of treating wherein the medicament is a combretastain analog,
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, for treating liver cancer in a mouse, the combination of Yong 1, Yong 2, and Pecyna fails to teach administering
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((E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate) in combination with an immunotherapeutic.
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to exemplify the compound of Yong 1 and method of treating liver cancer of Yong 2 and Pecyna with the combination of Deng as evidenced by Brudno to arrive at the instantly claimed invention.
One of ordinary skill in the art would have been motivated to administer (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate in combination with CAR-T cells, because Deng teaches that combretastain A4 phosphate (CA4P) shows high selectivity for tumor vasculature by selectively blocking the signaling pathway of endothelial cell-specific connexin VE-cadherin and that CA4P seldom causes any detectable lymphopenia or lymphoid cell depletion nor inhibit immune response (page 76, column 2, paragraph 1). Deng also teaches that CA4P effectively promotes CAR-T cell infiltration in different in vivo solid tumor models and improves the antitumor ability of CAR-T cells targeting different solid tumors (page 76, column 2, paragraph 2). Additionally, Deng teaches that administration of the combination of CA4P and CAR-T cells effectively treats different types of solid tumors (page 76, column 2, paragraph 2; page 82, column 2, paragraph 3; page 84, column 1, paragraph 2). Thus, one of ordinary skill in the art would have selected CAR-T cells for combined administration with the combretastain analog, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, and the results would be predictable.
As such, as artisan having ordinary skill in the art would have been motivated to make such a selection, to arrive at instant claim 18.
Regarding claim 20, Yong 2 teaches the tumor is liver cancer (column 10, lines 1-5; column 10, lines 21-23; column 10, lines 60-61) and Yong 1 teaches the teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2). Deng teaches treating cancer via administration of combretastain A4 phosphate with CAR-T cells (page 76, column 2, paragraph 2; page 82, column 2, paragraph 3; page 84, column 1, paragraph 2), which are T cells as evidenced by Brudno. Brudno teaches that CAR-T cells are T cells that are genetically engineered to express a synthetic receptor that recognizes a tumor cell-surface protein (page 1924, column 1, paragraph 1). Accordingly, the combination of Yong 1, Yong 2, Pecyna, and Deng (as evidenced by Brudno) teaches treating liver cancer via (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate and CAR-T cells.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
3. Claim 1-5 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,033,519 in view of Yong 1 (CN105,566,100, published 2 Nov 2018, citations to translation; of record; see PTO-892 mailed 13 Apr 2026) and Pecyna (Biomol., 2020, 10(1111), 1-10).
U.S. Patent No. 11,033,519 teaches treating liver cancer via (E)-3-(2,3-dihydroxyl-4’- methoxylphenyl)-2-(3”,4”,5”-trimethoxylphenyl)-2-acrylic acid, which has structure:
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(claim 7).
Regarding claim 1, ‘519 fails to teach (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate (
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).
Yong 1 teaches derivatives of combretastain A-4 (CA4), which have structure:
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(page 1, paragraph 4; page 2, paragraph 3). Yong 1 specifically teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which has the IUPAC name and structure: butan‐1‐aminium (2E)‐3‐(3‐hydroxy‐4‐methoxyphenyl)‐2‐(3,4,5‐trimethoxyphenyl)prop‐2‐enoate and
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2).
Pecyna teaches that combretastain-based compounds exert prominent anticancer activity alone but also exhibit distinct disadvantages: (1) isomerization from the (Z)-isomer to the less active (E) form during storage, administration, and metabolism, (2) low water solubility, and (3), non-selective targeting (page 14, paragraph 5). However, Pecyna then teaches solutions to the disadvantages: derivatives that preserve the core cis- relationship between the two aryl components, which then in turn preserves activity:
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and
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(page 16, paragraph 1; page 17, paragraphs 1- 2). Additionally, Pecyna teaches that inclusion of a methoxy moiety increases dissolution in water (page 17, paragraph 1).
It would have been prima facie obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to exemplify the compound of Yong 1 to treat liver cancer as taught by ‘519 and Pecyna to arrive at the instantly claimed invention.
One of ordinary skill in the art would have been motivated to select the compound of Yong 1 to treat liver cancer as taught by ‘519 and Pecyna, because:
-‘519 teaches treating liver cancer via (E)-3-(2,3-dihydroxyl-4’- methoxylphenyl)-2-(3”,4”,5”-trimethoxylphenyl)-2-acrylic acid, which has structure:
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(claim 7).
-Yong 1 teaches derivatives of combretastain A-4 (CA4), which have structure:
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,
-Yong 1 teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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,
-Pecyna teaches that combretastain-based compounds exert prominent anticancer activity alone but also exhibit distinct disadvantages: (1) isomerization from the (Z)-isomer to the less active (E) form during storage, administration, and metabolism, (2) low water solubility, and (3), non-selective targeting,
-Pecyna teaches solutions to the disadvantages: that derivatives that preserve the core cis- relationship between the two aryl components which then in turn preserves activity:
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and
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, and
-Pecyna teaches that inclusion of a methoxy moiety increases dissolution in water.
Thus, one of ordinary skill in the art would have selected the compound of Yong 1 to treat liver cancer as taught by ‘519 and Pecyna, and the results would be predictable.
Regarding claim 2, Yong 1 teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2), wherein the organic amine is n-butylamine.
Regarding claim 3, Yong 1 teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2), wherein the compound of Formula (I) is a compound of Formula (II):
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, wherein M is n-butylamine, R1 and R4 are hydrogen, R2 is hydroxy, and R3 is methoxy.
Regarding claim 4, Yong 1 teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2), wherein the compound of Formula (I) is a compound of Formula (III):
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, wherein M is n-butylamine, R1 is hydrogen, R2 is hydroxy, and R3 is methoxy.
Regarding claim 5, Yong 1 teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2), wherein the compound of Formula (I) is a compound of Formula (IV):
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, wherein M is n-butylamine, R2 is hydroxy, and R3 is methoxy.
Regarding claim 9, ‘519 teaches the tumor is liver cancer (claim 7).
Regarding claim 10, ‘519 teaches the tumor is liver cancer (claim 7) and Yong 1 teaches the teaches the compound, (E)-3-(3’-hydroxy-4’-methoxyphenyl)-2-(3’’,4’’,5’’-trimethoxyphenyl)-2-n-butylammonium acrylate, which is
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(Example 1, page 5, paragraphs 11-12; page 6, paragraphs 1-2).
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Madeline M Dekarske whose telephone number is (571)272-1789. The examiner can normally be reached Monday - Thursday 10am - 4pm.
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/MADELINE M. DEKARSKE/Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622