DETAILED ACTION
Claims 1-6 and 8-11 are currently pending. Claims 1-2 are currently under examination.
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
Applicant’s election without traverse of Group I in the reply filed on 05/19/2026 is acknowledged.
Claims 3-6 and 8-11 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/19/2026.
Applicant’s election without traverse of cyclopentyl methyl ether,
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for formula I and
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for formula II in the reply filed on 05/19/2026 is acknowledged.
No claims are withdrawn as a result of the species election.
Priority
The instant claims are a national stage entry of PCT/JP2022/045954, filed 12/14/2022, which claims priority to JP2021-204594, filed 12/16/2021.
Information Disclosure Statement
Applicant’s Informational Disclosure Statement, filed on 06/13/2024, 03/05/2026 and 09/04/2026 has been considered. Please refer to Applicant's copy of the 1449 submitted herein.
Drawings
The drawings filed 07/10/2026 are entered.
Claim Objections
Claim 1 is objected to because of the following informalities: The limitation of “one or more kinds of solvents” would be remedial to change to “one or more solvents” for better readability. Appropriate correction is required.
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.
Claims 1-2 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.
Claim 1 contains the limitation of (MPa1/2) which has unclear metes and bounds as it is unclear if the limitations inside the parenthesis are optional or required.
Claim 1 contains the limitation of “dissolving a composition…. to perform liquid-liquid extraction and refining the compound represented by the following Formula (1)”. The instant claim has unclear metes and bounds as it is unclear if the liquid-liquid extraction is being performed or capable of being performed. The use of “to perform liquid-liquid extraction” indicates the steps are possible, wherein the only active step required is dissolving a composition. It is unclear if the liquid to liquid extraction steps are performed and thus leads to unclear metes and bounds of the instant claim.
Claim 1 contains
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wherein it is unclear what “…(1)” in regards to Formula (1) represents. It is unclear if the periods represent an additional part of the formula or are not a limiting component of the claim.
Claim 1 contains the limitation “all of which have a solubility parameter (SP value) of..”, wherein it is unclear what “all of which” is referring back to as there is unclear antecedent basis. It is unclear if the solubility parameter is referring back all of the names solvents or only specific ones. It would be remedial to properly refer back to “one or more kinds of solvents”.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO 2023/067561 (Applicant provided IDS 03/05/2026).
Regarding claim 1, the ‘561 publication teaches an ionizable cationic lipid in forming lipid nanoparticles to encapsulate a therapeutic agents such as a nucleic acid (abstract). The ‘561 publication exemplifies
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(page 64, lines 15-20). Compound 5-1 after reaction was completed was poured into H2O and extracted with EtOAc. The combined organic layer was washed with brine and concentrated in a vacuum to give compound 5-1 as a yellow oil (page 64, line 20, to page 65, line 5). The ‘561 publication teaches compound 5-1 which is the elected compound. The compound 5-1 forms a solution with water and extracted using ethyl acetate, thus teaching the dissolving in water and liquid-liquid extraction using an organic layer.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/230710 (Applicant provided IDS 06/13/2024) in view of US 11,242,305 and de Gonzalo (de Gonzalo, Gonzalo, ChemSusChem 2019, 12, pgs 2083-2097) as evidenced by SciFinder (SciFinder structure, accessed 08/31/2026, page 1-2).
The ‘710 publication is a non-english language publication, thus US 2020/0129431 (Applicant provided) will be used as an English language equivalent. For examination purposes all citation to Harashima will be locations in the ‘431 publication.
Regarding claim 1, Harashima teaches a lipid membrane structure including lipid components (abstract). The reaction and purification of 7-(4-(diisopropylamino)butyl)tridecane-1,7,13-triol is taught. The mixture is reacted overnight at room temperature and solvent is distilled off using a rotary evaporate, and the purified by subjected to reverse phase silica gel chromatography (elution solvent water: acetonitrile) continuous gradient to obtain a pale-yellow oil [0155]. 7-(4-(diisopropylamino)butyl)tridecane-1,7,13-triol is evidenced to be the elected structure (SciFinder page 2) and Harashima (page 19, Chem 11). Harashima teaches the structures purified using water and an organic solvent, thus teaching compound and water being present, thus dissolving, and liquid-liquid extraction and refining.
Harashima does not specifically teach the claimed one or more kinds of solvents (claims 1-2) or specifically the elected cyclopentyl methyl ether.
The ‘305 patent teaches methods for forming furan-based surfactants by reactive distillation (abstract). Distillation column is taught to use solvent in the distillation and subsequent liquid-liquid extractions. These solvents can include ketones including acetone and methylethylketone, organics such as acetonitrile. Useful solvents include acetonitrile, cyclopentyl methyl ether and water (column 8, lines 35-60).
De Gonzalo teaches cyclopentyl methyl ether (CPME) is taught as an eco-friendly solvent for applications in biotechnology including chromatography, liquid-liquid separation and cosolvents.
It would have been obvious to one of ordinary skill in the art to substitute a first solvent, acetonitrile, as taught by Harashima with a second solvent, cyclopentyl methyl ether, as taught by the ‘305 patent with a reasonable expectation of success because the simple substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. M.P.E.P. §2144.07 states "The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).” When substituting equivalents known in the prior art for the same purpose, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). M.P.E.P. §2144.06.
One of ordinary skill in the art before the filing date of the claimed invention would have a reasonable expectation of success as the ‘305 patent is directed to solvents used in column distillation and liquid-liquid extractions including both acetonitrile and cyclopentyl methyl ether thus teaching the interchangability of acetonitrile and cyclopentyl methyl ether as organic solvents used in column distillation and purification methods and Harashima teaches the use of acetonitrile in purification by chromatography. Thus one of ordinary skill in the art before the filing date of the claimed invention would have motivation and a reasonable expectation of success in using known solvents to be used interchangeably in purification for the purification solvent taught by Harashima. One of ordinary skill in the art before the filing date of the claimed invention would be motivated to use cyclopentyl methyl ether in place of acetonitrile as it is taught as eco-friendly solvent.
Conclusion
No claims are allowed.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDSEY MARIE BECKHARDT whose telephone number is (571)270-7676. The examiner can normally be reached Monday-Thursday 9am to 4pm and Friday 9am to 2pm.
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/LYNDSEY M BECKHARDT/ Examiner, Art Unit 1613
