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 .
DETAILED ACTION
1. Claims 1-16, 18-21 are pending in the current application.
2. This application is a 371 of PCT/GB2022/052325 09/14/2022; FOREIGN APPLICATIONS: UNITED KINGDOM 2113117.2 09/14/2021.
Response to Restriction Election
3. Applicant’s election of group I and the species (the 2nd compound in claim 15) in the reply filed on July 8, 2026 is acknowledged. The election was made without traverse. According to applicants’ representative claims 1-15, 21 of the elected group read on the elected species. Claim 11 does not read on the elected species. As detailed in the following rejections, the generic claim encompassing the elected species was not found patentable. The search and examination was continued until prior art was found that anticipated or rendered obvious a non-elected species that falls within the scope of the generic Markush claim reading on the elected species. As per MPEP 803.02 II. C. “[T]he examiner must continue to search the species of the claim unless the claim has been found to be unpatentable over prior art.” The examiner “need not continue to search the claim if the claim is rejected over prior art”. [ibid. D.] Therefore, the search and examination is restricted to the claims reading on the elected species, and claims not reading on the elected species are held withdrawn. Accordingly, claim 11 and 16, which do not read on the elected species are withdrawn.
Objections
4. The title of the invention is not descriptive. The current title, IDEBENONE DERIVATIVES AND THEIR USE IN TREATING PLANTS, mentions treating plants. After reviewing the specification all of the data appears to be directed towards animal cells and worms. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: IDEBENONE DERIVATIVES
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.
5. Claim(s) 1, 4-5, 10, 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Montenegro in Molecules 2017 (cited on the IDS of March 13, 2024 as reference 2). Montenegro teaches compound IDELIP on page 3 Scheme 1, which is a compound of claim 1 Formula I where R1 an R2 are alkoxy (methoxy), R3 is alkyl (methyl), L is a linker, A is 1,2-dithiolane.1 It was formulated into various compositions including those in water, ethanol and various buffers for assays on pages 10 ff.
6. Claim(s) 1, 4-5, 10, 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fato “Determination of partition and lateral diffusion coefficients of ubiquinones by fluorescence quenching of n-(9-anthroyloxy)stearic acids in phospholipid vesicles and mitochondrial membranes.” Biochemistry, 25(11), 1986, 3378-90. Fato teaches compound 2,3-dimethoxy-5-methyl-6-(10-sulfodecyl)-1,4-benzoquinone (SBQ) on page 3379 lines 14-5, which is a compound of claim 1 Formula I where R1 and R2 are alkoxy (methoxy), R3 is alkyl (methyl), L is a linker (decyl), A is a sulfonic acid2. It was formulated into various compositions for experiments.
7. Claim(s) 1, 3-4, 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated GB 940536. GB ‘536 teaches Example 1 and 2 on page 2 which are compounds of claim 1 Formula I where R1 and R2 form an aryl ring, R3 is alkyl (methyl), L is a linker (alkyl), A is a either a thiocarbonate in example 1 or a phoshinodiothioate in Example 33. It was formulated into various compositions for experiments.
8. Claim(s) 1-5, 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated Ning “Discovery of novel naphthoquinone derivatives as inhibitors of the tumor cell specific M2 isoform of pyruvate kinase.” European Journal of Medicinal Chemistry, 138, 343-352 2017. Ning teaches compounds of the formula in figure 2 on page 344:
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Specific examples in the Table on page 345 are given
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which are compounds of claim 1 Formula I where R1 and R2 form an aryl ring, R3 is alkyl (methyl), L is a linker (alkyl), A is a thiocarbamate of claim 2, B is alkyl, Z is -S-. The compounds were formulated into various compositions for experiments.
Claim Rejections - 35 USC § 112 b
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.
9. Claims 4-6 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. Claims 4-6 state “comprises a group…selected from”. MPEP § 2173.05(h), states “A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group ‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.”
Claim Rejections - 35 USC § 112 a
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
10. Claims 1, 4-7, 10, 12-14, 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed. The test for sufficiency of support in a parent application is whether the disclosure of the application relied upon "reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter." Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985) (quoting In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)). Whenever the issue arises, the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). See M.P.E.P. § 2163.02. In this case, the skilled artisan would not have reasonably concluded at the time of the invention that applicant was in possession of the entire invention as claimed.
Claim 1 is drawn to compounds with a group “A is a group capable of releasing hydrogen sulphide”. They therefore seek to define compounds by particular functional requirements. The specification, however, does not provide any specific correlation between a particular structural property and the claimed function. The description is unclear for a variety of reasons. The specification has a few examples that is said to have the functional requirement which has no relationship to the claims.
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The specification does not actually show that H2S is released. It is not clear in what context it can be released. Some groups are photochemically active, others thermally, others enzymatically, etc. and each instance must be investigated by a team of chemists with a background in organic chemistry and/or biology and analytical chemistry. As discussed above in Bilska-Wilkosz each group must be investigated and no real conclusion based on structure alone is generally possible. The specification is devoid of any examples showing a correlation of structure to function and is entirely generic. Applicants provide no guidance for identifying the compounds that meet the requirements, and as such the claims lack written description.
The fact pattern in this case is similar to that in University of Rochester v. G.D. Searle & Co., 68 USPQ2d 1424 (W.D.N.Y. 2003). In Rochester, there were no compounds known to have the required function. The key similarity between the cases, and the one relevant to this ground of rejection, is the fact that no method (other than trial-and-error) is provided for identifying compounds having the desired function. For this reason, the rejection due to lack of written description is
Objections
11. Claim 8-9, 15 is objected to for depending from a rejected base claim, but would be allowable in independent format with all the limitations of the base claim and any intervening claim.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID K O'DELL whose telephone number is (571)272-9071. The examiner can normally be reached on Monday - Friday 9:30 - 7:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached on 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID K O'DELL/Primary Examiner, Art Unit 1621
1 Montenegro’s compound is a conjugate of lipoic acid which is known to releases H2S. See Bilska-Wilkosz “Lipoic Acid as a Possible Pharmacological Source of Hydrogen Sulfide/Sulfane Sulfur Molecules 2017, 22, 388; “These results suggest that, in the presence of light, LA can be decomposed non-enzymatically with H2S release.” When reduced in vivo to its open-chain dithiol form (dihydrolipoic acid or DHLA), it acts as a robust reducing agent. It interacts with intracellular sulfane sulfur pools to facilitate the liberation of H2S.
2 Sulfonic acids react with concentrated hydroiodic acid and red phosphorus, or Lithium Aluminum Hydride or Lithium Metal to yield H2S. Hydrodesulfurization (HDS) with hydrogen gas over a metal catalyst (such as cobalt-molybdenum or nickel-molybdenum) yields H2S gas. Sulfate-Reducing Bacteria (SRB) possess specific enzyme pathways capable of utilizing organic sulfur compounds, certain strains can metabolize sulfonates.
3 Phoshinodiothioate is listed by name in claim 3.
Prosecution Insights