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 .
Status of the Claims
Per Applicant’s amendment to the claims, submitted on 05/18/1016, claims 5-8 and 12-16 are amended. Currently, claims 1-8, 10, and 12-19 are pending in the instant application.
Claim Rejections - 35 USC § 112 Second Paragraph - Withdrawn
Rejection of claims 5, 8, and 12-13:
In light of Applicant’s amendment to the claims, the rejections of claims 5, 8, and 12-13 are hereby withdrawn. Claims 5 and 8 have been amended to remove the indicated indefinite language. Claims 12-13 have been amended to now recite a method rather than a medicament, rendering the previous rejections moot.
Claim Rejections - 35 USC § 112 Second Paragraph - Maintained
Claims 6 and 14-16 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.
Rejection of claims 6, 14-16:
Applicant’s amendments are not sufficient to overcome the outstanding rejections, the rejections are hereby maintained.
With regards to claim 6, the claim still contains an instance of the term “preferably”, which constitutes indefinite language.
With regards to claim 14, the claim has been amended to depend upon the method of claim 12 “wherein said medicament is a medicament for preventing cancer metastasis and/or for preventing cancer recurrence and/or for decreasing resistance to a chemotherapy in a subject”. The recitation of the instant claim does not add any further material structure to the medicament being administered in claim 12, and only describes an intended use or outcome. Accordingly, a person of ordinary skill would not reasonably be able to understand the metes and bounds of the claim.
With regards to claim 15, the amendment is not sufficient to overcome the outstanding rejection because the claim still contains an instance of the indefinite term “preferably”.
With regards to claim 16, the claim has been amended to depend upon the method of claim 12 “wherein said medicament is a medicament for preventing cancer metastasis and/or for preventing cancer recurrence and/or for decreasing resistance to a chemotherapy in a subject”. The recitation of the instant claim does not add any further material structure to the medicament being administered in claim 12, and only describes an intended use or outcome. Accordingly, a person of ordinary skill would not reasonably be able to understand the metes and bounds of the claim.
Claim Rejections - 35 USC § 103 – Withdrawn
Rejection of claims 1-8, 10, 15, and 17-19:
Applicant’s arguments are persuasive. Applicant provides that the compounds of the instant claims provide an unexpected result in the form of greater activity against cancer stem cells. As indicated in the previous Office Action, the compound found in Mehrpour page 11, and the additionally disclosed compound AM17 were provided as an obvious combination in forming a salinomycin derivative having epi conformation at C20. However, Mehrpour does not teach or suggest that the C20 conformational change results in superior selectivity for cancer stem cells, and in particular, the HMLER cells identified in the disclosure and newly disclosed documents.
Double Patenting – Withdrawn
Rejection of claims 1-8, 10, and 12-19:
Applicant’s arguments are persuasive, the rejections are hereby withdrawn. The claims of the ‘298 patent provide a situation wherein said claims dominate the claims of the instant application due to the recitation of “diastereomers” thereof. However, the inventions of the instant application are drawn to C20 epimers and derivatives thereof of salinomycin, which the claims of the ‘298 patent do not implicate.
Conclusion
Claims 6 and 14-16 are rejected.
Claims 1-5, 7-8, 10, 12-13, and 17-19 are in condition for allowance.
THIS ACTION IS MADE FINAL. 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.
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/ERIC TRAN/Examiner, Art Unit 1629
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