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 .
102 Rejections Withdrawn
The rejection of claims 25, 28 and 29, in so far as they read on the species defined in the previous Office Action, under 35 USC 102(a)(1), outlined in the previous Office Action, has been overcome by inventor’s amendment. The amendment narrows the scope of the claimed subject matter such that it no longer reads on the cited art.
Markush Search
Inventor having overcome the outstanding art rejection, the search was, therefore, expanded as called for under Markush examination practice, a compound-by-compound search, to include a single additional species. That species is defined when, using Formula (II) of independent claim 25: R1=side chain of serine (HOCH2-); n=1, p=0; W=a bond; m=0; X’=O; z=2; and A= -NR2R3 where R2=R3=C12 alkyl.
All claimed but as yet unexamined subject matter which does not read on the above defined species is hereby withdrawn from consideration, for purposes of this Office Action, as being drawn to non-elected subject matter. This subject matter will be rejoined as appropriate as the Markush examination progresses.
Claim Rejections - 35 USC § 102, NEW
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.
Claims 25, 28 and 29, in so far as they read on the species defined above, are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by FR 2687390.
The reference teaches inventor’s compound (formula (II)) as a synthetic intermediate in the preparation of compounds of formula (I) (page 2, diagramed formula (II); page 4, EXAMPLE 1, -R1=R2=C12H25, n=2)
The examiner notes that the reference teaches two other of inventor’s compounds as well: -R1=R2=C14H29, n=2; and -R1=R2=C16H33, n=2.
Allowable Subject Matter
As previously noted, the elected species being free of the prior art, claim 32, which is drawn exclusively to the elected species, is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EDT.
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, Ali Soroush, can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 5/7/2026
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