DETAILED ACTION
Claims 1-11, 15, 16, 25-28, and 30-32 are currently pending in the instant application. Claim 1 is objected. Claims 1, 3, 5, 7, 8, and 11 are rejected. Claims 2, 4, 6, 9, 10, 15, 16, 25-28 and 30-32 are withdrawn from consideration as being for non-elected subject matter.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I and the species of claim 11:
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in the reply filed on 5 May 2026 is acknowledged.
According to MPEP 803.02, the examiner has determined whether the elected species is allowable. Applicants’ elected species is not allowable. However, in order to expedite prosecution, the search and examination has been extended to the compound:
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which is not allowable.
Claims 1, 3, 5, 7, 8, and 11 have been examined to the extent that they are readable on the elected embodiment, the elected species and the above mentioned compounds. While applicant states that at least claims 1-11 encompass the elected species, it is noted that claims 2, 4, 6, 9 and 10 do not encompass the elected species. Claim 2 has X as H whereas the elected species has X as:
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. Claim 4 has X as
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whereas the elected species has X as
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. Claim 6 has R4 as O whereas the elected species has R4 as S. Claim 9 has R3 as:
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whereas the elected species has R3 as a bond. Claim 10 has R3 as O, N(H), N(Ch3), S or SS whereas the elected species has R3 as a bond.
Claim Objections
Claim 1 is objected to because of the following informalities: the provided out compounds in claim 1 have spacing issues in the names:
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Appropriate correction is required.
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)(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(s) 1, 3, 5, 7 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by IN 185329.
IN 185329 discloses the compound of the formula as in Figure 1:
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wherein R represents a protecting group derived from a substituted aryl carbinol of formula 2:
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(see figure 2) wherein X is 0 or 1 and B is OCH3 or H group, n shows the number of carbon atoms in the linker arm and A represents 2-cyanoethylphosphoramide moiety, page 2. Page 12 provides the compound
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in example 1 wherein the phosphoramidite is obtained in 80% yield which corresponds to n as 3. This compound corresponds to the instantly claimed formula:
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wherein X is
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R1 is C3 alkyl; R2 is C3 alkyl; L1 is C1-2alkylene; R3 is a bond; L2 is C1-2alkylene; R4 is S; R5 is H, R6 is OCH3, and R7 is OCH3. Regarding instant claim 5, as R3 is not SS, the limitations in claim 5 are not required and therefore claim 5 is also rejected as anticipated as R3 is S.
Claim(s) 1, 3, 5, 7 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Registry No. 765916-03-8.
Registry No. 765916-03-8 is
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which corresponds to the instantly claimed formula:
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wherein X is
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R1 is C3 alkyl; R2 is C3 alkyl; L1 is C1-2alkylene; R3 is a bond; L2 is C1-2alkylene; R4 is S; R5 is H, R6 is OCH3, and R7 is OCH3.
Registry number 765916-03-8 is available as prior art as of 20 October 2004 the date it was indexed into the CAplus database.
See MPEP 2128: ELECTRONIC PUBLICATIONS AS PRIOR ART Status as a "Printed Publication" An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) Since this date represents the date that each compound entered the CAPlus database on STN, this represents the date that each compound was made accessible to the public.
The aforementioned compound anticipates the instantly claimed compounds: It is further noted that for the purposes of determining if a reference is a “printed publication” for the purposes of 102(b), MPEP 2128 states the following:
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where “prior art disclosures…on an on-line database are considered to be publicly available as of the date the item was publicly posted.” Since each of the database entries above lists the date that each compound was entered into the on-line database, the compounds were made publicly available as of that date in each citation, and the claims are anticipated.
Regarding instant claim 5, as R3 is not SS, the limitations in claim 5 are not required and therefore claim 5 is also rejected as anticipated as R3 is S.
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, 3, 5, 7, 8, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over IN 185329.
IN 185329 discloses the compound of the formula as in Figure 1:
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wherein R represents a protecting group derived from a substituted aryl carbinol of formula 2:
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(see figure 2) wherein X is 0 or 1 and B is OCH3 or H group, n shows the number of carbon atoms in the linker arm and A represents 2-cyanoethylphosphoramide moiety, page 2. Page 12 provides the compound
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in example 1 wherein the phosphoramidite is obtained in 80% yield which corresponds to n as 3. Also see page 14, example 2 wherein n is 6 wherein the phosphoramidite is obtained in 78% yield. Applicant’s elected species is:
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which corresponds to the formula
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of the prior art wherein n is 2. Therefore, the elected species is a homolog of the compounds disclosed in example 1 and example 2 wherein n is 3 and 6 respectively. To those skilled in chemical art, one homologue is not such an advance over adjacent member of series as requires invention because chemists knowing properties of one member of series would in general know what to expect in adjacent members. In re Henze, 85 USPQ 261 (1950). The instant claimed compounds would have been obvious because one skilled in the art would have been motivated to prepare homologs of the compounds taught in the reference with the expectation of obtaining compounds which could be used as thiol modifier phosphoramide reagents (see page 2 and 5 of IN185329). Therefore, the instant claimed compounds would have been suggested to one skilled in the art. Additionally, please see MPEP 2144.09, Compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L ANDERSON whose telephone number is (571)272-0696. The examiner can normally be reached Monday-Friday from 6am-2pm.
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, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626 ____________________ 12 June 2026
Rebecca Anderson
Primary Examiner
Art Unit 1626, Group 1620
Technology Center 1600
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