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 .
Claim Rejections - 35 USC § 112 – 2nd paragraph
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 12, 15, 20-26, and 31-36 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 12 states that:
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However, this limitation does not necessarily require all of the compounds claimed as having the required sulphonate group. For example, R-4 is optionally IIa or IIb:
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. If R9 is sulphonate, that would meet the limitations of the proviso above requiring one of the R-groups to be a sulphonate group. However, R4 could be formula (IIb), and thus the compound itself would not have any sulphonate groups. The examiner believes applicants intended the compounds claimed to all have the sulphonate group(s).
Claim 24 is indefinite wherein the claim appears to be missing a portion of the 1st depicted compound:
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on the bottom of page 4 of the claims.
Claims 24 and 35 are indefinite wherein the claims provide Y is “H ou SO3-Na+” in various species. It is believed “ou” is “or”, however, clarity is respectfully requested.
All claims which depend from an indefinite claim are also indefinite. Ex parte Cordova, 10 U.S.P.Q. 2d 1949, 1952 (P.T.O. Bd. App. 1989).
Claim Rejections - 35 USC § 112 – 4th paragraph
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.
Claims 24 and 35 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. Claims 24 and 35 embrace a compound having the formula:
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wherein the arrow is pointing to a -C(OY)- group which is not embraced by the claims from which they depend. The compounds in the independent claims have the formula:
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wherein R4 is either
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. As such, it appears the species above would require R4 to be (IIb), however, according to formula I in the independent claims, R4 is linked through the carbon of the amide group of R4, yet in dependent claims 24 and 35 they are linked through an additional -C(OY)- group, which is not embraced by the parent claims. 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.
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) 12, 14-20, 22, and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,686,603.
‘603 discloses in example 97 the compound having the formula:
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which would anticipate the present compounds and compositions comprising the same wherein R2, R3, R6, R7, and R8 are H; R11 is CH2-OR5 wherein R5 is H; R4 is formula IIa wherein R10 is H and R9 is ionized sulphonate (together with the Na); and R1 is a C16-alkyl group. This lactobioamide compounds would be seen to have the same lactobioamide compounds claimed herein.
Allowable Subject Matter
Claims 27-30 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.
The closest prior art is seen to be US 5,686,603 as cited above who discloses the same compounds claimed herein. However, ‘603 is not seen to teach or fairly suggest the use of their surfactant compounds in the manner claimed herein for treating a tauopathy such as Alzheimer’s disease.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAVISS C MCINTOSH III whose telephone number is (571)272-0657. The examiner can normally be reached Monday-Friday 9AM-5:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRAVISS C MCINTOSH III/Primary Examiner, Art Unit 1693
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