CTNF 18/564,611 CTNF 90110 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. DETAILED ACTION Claims 1-9 are pending in the instant application and are examined on the merits herein. Priority This application is a National Stage Application of PCT/IN2022/050500, filed on 5/30/2022. The instant application claims foreign priority to IN 202141024011 filed on 5/29/2021. Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d). The certified copy has been filed in the instant application on 11/27/2023. 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. Claims 3, 5 and 8 are rejected for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claims 3, 5 and 8 recites phases “such as” and/or “and like”. The term "such as" or “and like” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Preferences, options and examples are properly set forth in the specification, but when included in the claims lead to confusion over the intended scope of the claim. See MPEP § 2173.05(d). For examination purposes, the broadest claim limitation(s) will be considered without taking into account preferences or examples. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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 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. 07-20-aia AIA 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 of this title, 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. 07-20-02-aia AIA 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. 07-23-aia AIA The factual inquiries set forth in Graham v. John Deere Co. , 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. 07-21-aia AIA Claim s 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ferraris et al. (J. Med. Chem., 2014, PTO-892), in view of Choi et al. (US 2016/0237107, PTO-892) .. Ferraris et al. discloses a process for preparing cedazuridine (a.k.a. “7a”) (identical to instant Formula-1), and its’ epimer (a.k.a. “7b”) comprising: (Scheme 1; p. 2586, Col.2) PNG media_image1.png 269 1006 media_image1.png Greyscale starting with gemcitabine (a.k.a. “2”) (identical to instant Formula-2), which is reduced in an aqueous medium by rhodium on carbon with hydrogen gas to compound 6 (identical to instant Formula-3); then sodium borohydride reduction of compound 6, in methanol, to yield cedazuridine, 7a, and its’ epimer, 7b. Ferraris further discloses that purification of the desired product comprises: a) filtering, concentrating and re-dissolution in water, followed by; b) isolation of pure cedazuridine by HPLC. (p. 2586, Col.2) Ferraris also discloses X-ray crystallographic data on the structure of compound 7a. (Figure 3) With respect to claim 8, Ferraris does not teach a specific temperature for filtering or re-dissolution, however, one of ordinary skill would reasonably assume ambient temperature, which is within the scope of the claimed “about 25°C to about reflux temperature”. With respect to claim 9, Ferraris does not explicitly disclose a process for crystallization of compound 7a, however, Ferraris does disclose that a crystal structure of 7a was obtained. Thus, it is obvious that the HPLC purified 7a must have been used as a starting material for crystallization of 7a, thereby meeting the limitation of crystallization as an isolation mechanism. Ferraris does not teach that the NaBH4 reduction takes place in the presence of a catalyst, preferably cerium trichloride. Choi et al. discloses a process for converting compound IIa into compound IIIa by reaction with NaBH4 in CH2Cl2/EtOH, where the reduction may optionally be done with CeCl3 as a catalyst. (¶0062) PNG media_image2.png 177 256 media_image2.png Greyscale PNG media_image3.png 183 265 media_image3.png Greyscale It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the synthesis process of Ferraris by adding a CeCl3 catalyst to the NaBH4 reduction of compound 6, thereby arriving at the instant invention. One would be motivated to modify Ferraris in this manner because Choi teaches that the addition of a CeCl3 catalyst in a NaBH4 reduction of a compound nearly identical to compound 6, is a known optional way to successfully carry out the reduction. Accordingly, the instant claims are prima facie obvious over the teachings of the prior art. Conclusion No claims are allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DALE R MILLER whose telephone number is (571) 272-6146. The examiner can normally be reached on M-F 7:00 AM – 3:30 PM 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 on (571) 270-5341. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from Patent Center and the Private Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from Patent Center or Private PAIR. Status information for unpublished applications is available through Patent Center and Private PAIR to authorized users only. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). /DALE R MILLER/Primary Examiner, Art Unit 1693 Application/Control Number: 18/564,611 Page 2 Art Unit: 1693 Application/Control Number: 18/564,611 Page 3 Art Unit: 1693 Application/Control Number: 18/564,611 Page 4 Art Unit: 1693 Application/Control Number: 18/564,611 Page 5 Art Unit: 1693 Application/Control Number: 18/564,611 Page 6 Art Unit: 1693