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 .
Current Status
This action is responsive to the amended claims of 06/25/2026. Claims 1-25, 29-30, 33-34, 36, 39, and 41 are pending. Claims 5, 8-10, 21, 23-24, 29-30, 33-34, 36, and 39 are withdrawn.
Claims 1-4, 6-7, 11-20, 22, 25, and 41 have been examined on the merits.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-25 and 41) and the species of Formula (I) compound I-2
PNG
media_image1.png
151
505
media_image1.png
Greyscale
(wherein Q is Q4, R1 is C(O)R7, and R7 is an alkenyl) in the reply filed on 06/22/2026 is acknowledged.
A search for the elected species did not retrieve any art. Thus, the search was expanded to Formula (I) wherein Q is Q4 and no art was retrieved (see SEARCH 6 of the attached search notes).
Thus, the Markush search was extended to Formula (I) wherein Q is Q3, R26-R29 are H, D, halogen, or alkyl/alkenyl/alkynyl, R1 is C(O)R7, and R7 is an alkyl/alkenyl/alkynyl chain of >6 carbons not interrupted by a heteroatom (see Pg. 25 of the attached search notes). This search retrieved 8 species, applied in the prior art rejections below. These species read on claims 1-4, 6-7, 11-20, 22, 25, and 41.
Since this search retrieved art, the search will not be extended unnecessarily to additional species in this action, per Markush search practice.
Claims 29-30, 33-34, 36, and 39 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 06/22/2026.
Claims 5, 8-10, 21, 23-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/22/2026.
Priority
The effective filing date is 04/01/2022 for the pending claims wherein Formula (I) Q is Q4 or Q3.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/20/2024 and 06/22/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claim 20 is objected to because of the following informalities:
Please add a comma after “all-cis-5,8,11,14-eicosatetraenoic acid” on Pg. 14 row 4 column 3.
Please delete either “tetracosahexaenoic acid” or “(Nisinic acid)” from the Common Name column on Pg. 15 row 4. While Nisinic acid is understood to be a synonym for tetracosahexaenoic acid, it is preferred if only acronyms are presented in parentheses. If Applicant chooses to keep “Nisinic acid” (rather than tetracosahexaenoic acid) in the Common Name column, please remove the parentheses.
Appropriate correction is required.
Note, to expedite prosecution, please address the following issues with withdrawn claim 24:
Please add a comma after “I-68” on Pg. 29;
Please remove the “and” before “I-111” on Pg. 38: i.e., “
Claim Interpretation
Claims 1-4, 6-7, 11-20, 22, 25, and 41 are interpreted as follows. Claim 1 recites R7 is an C7-30 alkyl/alkenyl/alkynyl chain optionally interrupted by 1-6 heteromoieties. The word “interrupted” is not defined in the specification; thus, it is interpreted under the broadest reasonable interpretation (BRI) to include situations wherein: 1) the heteromoiety is inserted between two adjacent carbons in the R7 chain (e.g., C7 alkyl with 1 interrupting N: -CH2-N-CH2-CH2-CH2-CH2-CH2-CH3 – results in 7 total C) and 2) the heteromoiety replaces one of the carbons in the R7 chain (e.g., C7 alkyl with 1 interrupting N: -CH2-N-CH2-CH2-CH2-CH2-CH3 – results in 6 total C).
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 6-7, 11-20, 22, 25, and 41 are 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 1 recites, in line 6 of the “A” definition on Pg. 8, “wherein the C1-6 alkyl, C2-6 alkenyl, C2-6 alkynyl,” of A are optionally further substituted. There is a lack of antecedent basis for these limitations under A. The variable A is not chosen from C1-6 alkyl, C2-6 alkenyl, or C2-6 alkynyl. Thus, an A moiety which is C1-6 alkyl, C2-6 alkenyl, or C2-6 alkynyl does not exist and cannot be further optionally substituted. Therefore, the metes and bounds of the claim are undefined rendering the claim indefinite. Dependent claims 2-4, 6-7, 11-20, 22, 25, and 41 are similarly rejected since they do not rectify the issue.
To overcome: please strike “C1-6 alkyl, C2-6 alkenyl, C2-6 alkynyl,” from line 6 of the “A” definition on Pg. 8.
Claim 20 recites in row 2 of the Common Name column, “rumenic acid (conjugated linoleic acid)”. Rumenic acid is a species of the genus conjugated linoleic acid. It is unclear if the species rumenic acid or the entire genus of conjugated linoleic acid is required by this recitation. Further, since conjugated linoleic acid is recited within parentheses, it is unclear if the genus is required by the claim or is merely exemplary. Therefore, the metes and bounds of the claim are undefined rendering the claim indefinite.
To overcome: please strike “(conjugated linoleic acid)” from row 2 of the Common Name column.
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.
Claims 1-4, 6-7, 11-20, 22, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GAO (Gao, H. et al., Journal of Chromatographic Science, 2004, 42, 91-99).
Regarding claims 1-4, 6-7, 11-18, and 22, GAO teaches the compound 5-hydroxytryptamine-n-behenoyl (Pg. 96 Table IV compound 115); reproduced below:
PNG
media_image2.png
258
916
media_image2.png
Greyscale
. This is a species of Formula (I) wherein Q is Q3; R26-R29 are each H; R30-R31 are each H; R1 is C(O)R7; R7 is C21 alkyl; R2, R5, and R6 are each H; R3 is H; R4 is A; A is OR54; and R54 is H.
Regarding claims 19-20, the alkyl group of R7 corresponds to the alkyl group present in the fatty acid behenic acid (22:0).
Regarding claim 25, GAO teaches the compound 115 is found as an organic pollutant in sewage (Pg. 96 Table VI title). The instant claim is drawn to a composition comprising the compound and a carrier; no limitations have been set on the type of composition or carrier. Thus, the sewage sample comprising the compound 115 is, under the BRI, a composition comprising the compound and a carrier.
Claims 1, 4, 6-7, 11-20, 22, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by THOAI (Thoai, P. V. & Nam, N. J., Hindawi Publishing Corporation Journal of Chemistry, 2013, 2013, 1-6; cited IDS of 09/20/2024).
Regarding claims 1, 4, 6-7, 11-19, and 22, THOAI teaches compounds (7), (8), and (9):
PNG
media_image3.png
398
513
media_image3.png
Greyscale
(Pg. 2 Scheme 2). These are species of Formula (I) wherein Q is Q3; R26-R29 are each H; R30 is H; R31 is C(O)C1alkyl; R1 is C(O)R7; R7 is C7 alkyl (7), C8 alkyl (8), or C9 alkyl (9); R2, R5, and R6 are each H; R3 is H; and R4 is -OCH3 which falls under both of C1alkoxy and A wherein A is OR54 and R54 is C1alkyl. The R7 alkyl groups of compounds (7)-(9) are alkyl groups found in the saturated fatty acids having lipid number (8:0), (9:0), and (10:0), respectively.
Regarding claim 20, the R7 alkyl groups of compounds (7) and (9) are alkyl groups found in caprylic acid (8:0) and capric acid (10:0).
Regarding claim 25, THOAI the compounds (7)-(9) are incubated with 80% human plasma solution (Pg. 2 Right col. last ¶). Under, the BRI this is a composition comprising the compound and a carrier (plasma solution).
Claims 1, 4, 6-7, 11-20, 22, 25, and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HORST (DE 3105850, pub. 1982; machine translation and original are attached).
Regarding claims 1, 4, 6-7, 11-18, and 22, HORST teaches N-lauryl-5-methoxy-N-acetyltryptamine (Pg. 22 ¶65 of translation). HORST also teaches the propionyl (rather than acetyl) version of this compound can be made (Pg. 19 ¶55). These compounds are reproduced below:
PNG
media_image4.png
316
586
media_image4.png
Greyscale
and
PNG
media_image5.png
346
586
media_image5.png
Greyscale
. These are species of Formula (I) wherein Q is Q3; R26-R29 are each H; R30 is H; R31 is C(O)C1-2alkyl; R1 is C(O)R7; R7 is C11 alkyl; R2, R5, and R6 are each H; R3 is H; and R4 is -OCH3 which falls under both of C1alkoxy and A wherein A is OR54 and R54 is C1alkyl.
Regarding claims 19-20, the R7 alkyl group of the compound is the alkyl group found in lauric acid (12:0).
Regarding claims 25 and 41, HORST teaches the compounds are administered orally as tablets or capsules, possibly in combination with other active substances or substances that enhance efficacy (Pg. 15 ¶46 of translation). This is understood as a pharmaceutical composition comprising a carrier and/or another therapeutic agent.
Claims 1, 12-20, 22, 25, and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SUZUKI (JP 2016-147833; cited IDS of 09/20/2024; machine translation attached).
Regarding claims 1, 12-18, and 22, SUZUKI teaches N-Acetyl-5-methoxy-1-octanoyl-2,4,6-tribromotryptamine and N-Acetyl-5-methoxy-1-(Z)-9-octa-decenoyl-2,4,6-tribromotryptamine (Pg. 14 compounds 54 & 56 of original document), reproduced below:
PNG
media_image6.png
325
463
media_image6.png
Greyscale
and
PNG
media_image7.png
435
719
media_image7.png
Greyscale
. These are species of Formula (I) wherein Q is Q3; R26-R29 are each H; R30 is H; R31 is C(O)C1alkyl; R1 is C(O)R7; R7 is C7 alkyl (54) and C17 alkenyl (56); R2 and R5 are halogen (Br); R6 is H; R3 is halogen (Br); and R4 is -OCH3 which falls under both of C1alkoxy and A wherein A is OR54 and R54 is C1alkyl.
Regarding claims 19-20, the R7 alkyl group of the compounds are the alkyl groups found in caprylic acid (8:0) and oleic acid (18:1).
Regarding claims 25 and 41, SUZUKI teaches cell repair agents containing the compounds taught therein (Pg. 2 ¶1 of translation) – the cell repair agents include biocompatible material and additives in addition to the compounds of the invention (Pg. 22 ¶22). Thus, SUZUKI teaches pharmaceutical compositions comprising the compounds and carriers (i.e., additives, biocompatible materials). The artisan would immediately envisage the cell repair agents comprising one or more compounds of the invention based on the disclosure (agents containing compounds taught (Pg. 2 ¶1 of translation)) and since the compounds have the same utility – cell repair capabilities after irradiation (Pg. 6 ¶8 of translation).
Conclusion
Claims 1-4, 6-7, 11-20, 22, 25, and 41 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA ELIZABETH BELL whose telephone number is (703)756-5372. The examiner can normally be reached Monday-Friday 9:00-5:30.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. 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.
/S.E.B./Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625
Prosecution Insights