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 .
CONTINUING DATA
This application is a 371 of PCT/EP2022/075109 09/09/2022
FOREIGN APPLICATIONS
EP 21195975.4 09/10/2021
Claims 16-30 are pending.
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 20-22, 24, 29, and 30 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 20 recites the broad recitation “porphyrins,” and the claim also recites “preferably selected from…” which is the narrower statement of the range/limitation.
Claim 21 recites “(ACE2) binding inhibiter,” and also recites that the ACE2 is preferably one of a list.
Claim 22 recites the broad recitation “coupling products,” and the claim also recites “preferably at least one of said coupling products is triazolyl,” which is the narrower statement of the limitation.
Claim 24 recites the broad recitation “coupling product,” and the claim also recites “preferably triazolyl,” which is the narrower statement of the limitation.
Claim 24 recites the broad recitation “1 to 8,” and the claim also recites “preferably ranging from 1 to 4,” which is the narrower statement of the range.
Claim 29 recites the broad recitation “infectious disease,” and the claim also recites “preferably a coronavirus or piconavirus infection, more preferably a SARS-CoV-2 infection,” which is the narrower statement of the limitation.
Claim 30 recites the broad recitation “step of coupling,” and the claim also recites “preferably a coupling reaction wherein…,” which is the narrower statement of the limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22-24 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 22 depends from claim 16. Claim 16 requires that the acetylated sialic acid is 4-O-acetylated sialic acid, 7-O-acetylated sialic acid, or 9-O-acetylated sialic acid. Claim 22 that R1 are acetylated sialic acids, but does not require that the acetylated sialic acid is 4-O-acetylated sialic acid, 7-O-acetylated sialic acid, 8-O-acetylated sialic acid, or 9-O-acetylated sialic acid, or does not recite that R1 is the acetylated sialic acid of claim 16. Thus, claim 22 does not require all the limitations of claim 16. Claims 23-24 depend from claim 22 and incorporate the same limitation by reference. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art is Marra (Org. Biomol. Chem., cited on IDS). Marra teaches compound 28 on page 1401, wherein sialic acids are bound to a calixarene via a linker. Marra’s composition contains sialic acids, but not the acetylated sialic acids recited in claim 16. Wasik (Trends in Microbiology, December 2016, Vol. 24, No. 12) teaches that 9-acetylated and 7-O-acetylated Sia are receptors for various viruses. Wasik also teaches that the presence of the 9-O-Ac Sia modification affects the activities of the NA of influenza viruses, though the significance of that activity for natural viral fitness is not known. See page 996, second paragraph. Marra also teaches that, in the context of BKV, the installation of multiple copies of neuraminic acid onto a platform led to a decrease of the inhibition activity per sugar unit, in contrast to the glycoside cluster effect. Marra describes the results as disappointing. Page 1401, last paragraph. The glycoside cluster effect was operative in the context of influenza A virus (page 1402, left column). Barroso (Virus Research, 25 (1992) 145-153) teaches that N-acetylneuraminic acid was a better substrate for influenza A virus sialidase than the 9-acetylated derivative. Page 151, first few lines. The unpredictability of the prior art as a whole suggests that the skilled artisan would not have had a reasonable expectation of success in modifying Marra’s composition. The current specification paragraph [0192] states that SA, 9-SA, and SA-porphyrin did not produce significant reduction of VSV-SARS-CoV-2 infectivity, but 9-AcSA-porphyrin did significantly reduce infectivity.
Conclusion
Claims 20-24, 29, and 30 are rejected. Claims 16-19, 27-28 are allowed. Claims 25-26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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/LAYLA D BERRY/ Primary Examiner, Art Unit 1693
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