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 .
Election/Restrictions
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Applicant’s election without traverse of Group I (claims 1-7) and “formula I ”, colorectal cancer and cGAMP in the reply filed on 06/10/2026 is acknowledged. Claims 1-7 read on the elected species and group 1.
The elected group and species were found to be anticipated by the prior art and the search was halted.
The examined claims are 1-7.
Claims 8-22 are withdrawn.
Priority
The examiner notes that there is no certified English translation of the foreign application KR10-2021-0115253. If the applicant wants the application to be accorded benefit of the non-English language application, a certified translation is required. A date of was used for priority.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/07/2025, 02/28/2024, 12/31/2025 are being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: using <> to indicate headings is not normal English grammar .
Appropriate correction is required.
Drawings
The drawings are objected to because the resolution of figure 19 is poor. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Claims 1-7 are composition claims and as such do not depend on the use of the composition. Thus no 112a enablement rejection was written for claim 7 for preventing cancers. Given that the various types of cancers have different causative agents, involve different cellular mechanisms, and consequently, differ in treatment protocol a method of preventing cancer is generally not consider enabled.
The applicant is recommended to delete the word ‘prevent’ from the claims.
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 1-7 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.
Regarding claim 3, the parentheses renders the claim indefinite because it is unclear whether the limitation(s) within the parentheses are part of the claimed invention. For example it is unclear if it must be K48 linkage-specific polyubiquitination or not. See MPEP § 2173.05(d).
The scope of claim 1-7 is unclear because it is unclear if claim 1 is reciting a composition that is comprised of at least one component that is an active ingredient that inhibits the interaction between STING and TRIM29 or if claim 1 requires three components (1) active, (2) STING, (3) TRIM29 components. For the purposes of examination and based on the application as a whole the claim was interpreted with the understanding that claim 1 requires a single molecule that is an active ingredient that inhibits the interaction between STING and TRIM29.
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) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Kim (KIM, J., et al.; "Synthesis and library construction of privileged tetra-substituted A5-2-oxopiperazine as ß-turn structure mimetics" ACS combinatorial science, 2014, vol. 16, pp. 24-32, IDS).
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The reference KIM teaches the following compound which is the same compound as the elected species formula I (see scheme 3, page 28). The reference KIM also anticipates these compounds in drug compositions (see introduction, pages 24-25). However, it does not matter what the prior art teaches for the use of the compound of formula I because the instant claims are composition claims not method claims. It is the exact same compound and as such has the same properties whether or not those properties where known. “Products of identical chemical composition cannot have mutually exclusive properties.” Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F. 2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). This anticipates claims 1-7.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by CHO (CHO, Wansang; "Mechanism-based discovery of bioactive small molecules for immune modulation and cancer treatment", February 2021, 145 pages, IDS).
The reference CHO teaches the compound of formula I (figure 4.2, B page 102) AKA SB24011 that perturbs STING-TRIM29 interaction.
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The reference CHO teaches the use of formula I composition against colorectal cancer with cGAMP (page 109).
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This anticipates claims 1-2.
The reference CHO teaches (page 105):
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This anticipates claim 3.
The reference CHO teaches (page 107-109):
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However, it does not matter what the prior art teaches for the use of the compound of formula I because the instant claims are composition claims not method claims. It is the exact same compound and as such has the same properties whether or not those properties where known. “Products of identical chemical composition cannot have mutually exclusive properties.” Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F. 2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). This anticipates claims 1-7.
Conclusion
Claims 1-7 are rejected.
Claims 8-22 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISON AZAR HASTINGS whose telephone number is (703)756-4584. The examiner can normally be reached Mon-Thurs 7:30am-5pm EST Friday 7:30-4pm EST (every other Friday off).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached at (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.A.H./ Examiner, Art Unit 1627
/Kortney L. Klinkel/ Supervisory Patent Examiner, Art Unit 1627
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