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
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As such amended claims 13-15, 20-23 drawn to product are examined.
Claims 1-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/05/2026.
Claim Rejections - 35 USC § 102
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) 13-15, 20-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Santini, Inorganica Chimica Acta, 357(12), Sep. 10, 2004, 3549-3555.
Santini teaches the elected species instant compound 10 at top of page 3553.
Santini titled "New (diphenylphosphane)benzoic acid copper(I) derivatives of "scorpionate" ligands with superoxide scavenging activity", teaches that New copper(I) complexes have been synthesized from the reaction of CuCl with 4- or 2-(diphenylphosphane)benzoic acid.
As pointed above pointed out ligand and (the boron based) monovalent anion are found in Fig. 1 of page 3553.
As taught by Santini, page 3550 column A section under Introduction, the Cu(I) complex has superoxide scavenging activity and thus have antioxidant property. As such the limitation ‘pharmaceutical composition’ of claim 13 fits.
Independent claim 14 (and its dependents15, 20-22) are drawn to the pointed out compound in Fig.1 of Santini.
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.
Claim 22 is 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 22 relies on the specification with respect to elected species compound 10 (see bottom of claim numbered page 14 of 20, DPBA). Claims should be complete in themselves While you must define the scope of your invention directly within the claim language, with specification providing necessary written description, support, and context for those terms. See MPEP 2173 Claims Must Particularly Point Out and Distinctly Claim the Invention [R-10.2019].
Claim Rejections - 35 USC § 103
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.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Santini, Inorganica Chimica Acta, 357(12), Sep. 10, 2004, 3549-3555 and Vegas, Chapter 5 Balakrishna, Copper(I) Chemistry of Phosphines, Functionalized Phosphines and Phosphorus Heterocycles, Elsevier, 2019 and Cristina, US 06/05/2026.
Claim 23 is drawn to the elected species with specific BF4 monovalent counterion in the Cu complex, highlighted below:
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The pointed out monovalent ion differs from that of Santini’s otherwise same Cu complex.
Vegas is a review article, titled Copper(I) phosphine complexes: a promising approach in the search for antitumor agents. Vegas teaches that Cu complexes with different ligands and counter ions that are active as pharmaceutical agents. See, page 126 FIGURE 5.9 Structures of Cu(I) complexes 27 37 with hydroxy alkyl phosphines and derivatives.
Similarly, Cristina teaches at column 5 onto column 6:
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which suggests, the phamaceutical properties of Copper compounds are independent of the anion part of the compounds.
Taken together different possibilities with respect to ligands and counterions in the prior art copper complexes suggests that the pharmacological properties of the complexes resides in the Cu(I) phosphine core structure. For example as noted in FIGURE5.10-11 of pages 130-131, these copper complexes have a variety of counterions, including the above noted difference BF4-- counter-ion.
Therefore, one of skill in the art would have reasonable expectation of success in arriving at the elected copper (I) complex by the replacement of the counter-ion of Santini with the BF4-- counter-ion of Vegas.
As such the position taken is the elected species is a selective combination of the inventions by the prior arts done in a manner obvious to one of ordinary skill in the art. Patent for the combination of known elements wherein their functions remain the same withdraws “what is already known into field of its monopoly and diminishes resources available to skilled men”. Sakraida v. Ag Pro, Inc.189 USPQ 449, 425 US 273, (1976).
Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art.
Accordingly, the claims do not recite an unobvious distinction over the prior art. Further, a reference is relevant not only for what it expressly teaches, but also for what it would have conveyed to one of ordinary skill in the art. See In re Opprecht, 12 USPQ2d 1235, 1236 (Fed. Cir. 1989); In re Bode, 193 USPQ 12 (CCPA 1976). In light of the foregoing discussion, the Examiner finds that the claimed subject matter as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made, in view of the cited references and the knowledge generally available in the art. Accordingly, the claims are rejected under 35 U.S.C. § 103.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIZAL S CHANDRAKUMAR whose telephone number is (571)272-6202. The examiner can normally be reached M-F 8-5 EST.
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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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/NIZAL S CHANDRAKUMAR/Primary Examiner, Art Unit 1625
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