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 .
Claims 16-35 have been added.
Claims 16-35 are pending.
Claims 1-15 are cancelled.
Claims 22 are withdrawn.
Claim Rejections - 35 USC § 112b
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 17-21 and 23-35 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 17 is rejected under 112b due to the term "preferably" in claim 17 which is a relative term which renders the claim indefinite. The term "preferably" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
As drafted, "preferably" within claim 17 renders the metes and bounds of claim 17 undefined (hence rendering claim 17 indefinite) since the artisan has no idea what standard constitutes "preferably".
Furthermore, the limitation "preferably" can also be construed as rendering claim 17 indefinite since the artisan does not know whether the limitations following "preferably" are required limitations of the claim or are merely exemplary embodiments.
The dependent claims fall therewith.
Claim 18 is rejected under 112b due to it being unclear why the terms “Me, Et, Pr, Bu”, “e.g. CF3“, “e.g. SF5 “, and “e.g. OMe, OOMe, or CO2Me” are in parenthesis. Thus, it is unclear if this is a limitation in the claim or just a preferred embodiment.
Claim 18 is rejected under 112b due to the phrase "e.g." which renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 18 is rejected under 112b due to R4 being defined as an alpha carbon of an amino acid. This is unclear since it appears Applicant is only defining R4 as just a carbon atom, which is not the case when examination of the specification. For compact prosecution purposes, examiner interprets the definition to mean R4 is bound through the alpha carbon of an amino acid.
The dependent claims fall therewith.
Claims 23-25, 30, and 31 are rejected under 112b due to the combined use of “selected from the group consisting of” and the use of “or” combining the recited Markush group. See MPEP 2173.05(h) which states Markush format as "a material selected from the group consisting of A, B, and C". This rejection can be obviated by changing “or” to “and” to connect the Markush elements recited.
The dependent claims fall therewith.
Claim Rejections - 35 USC § 112d
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 17 rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
Claims 18-21 and 23-35 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 18 depends on itself, therefor it does not further limit the subject matter of the claim upon which it depends. Claim 18 also lists hydrogen as an option for variables R1-R3 and R5-R7, however this is not further limiting since a hydrogen does not fall under an optionally substituted heteroatom or cyclic hydrocarbyl, since a heteroatom by definition is any atom in an organic molecule that is not carbon or hydrogen (evidenced by RMIT University, 8.6 Heteroatoms and Functional Groups, page 2, paragraph 1) and a cyclic hydrocarbyl is a hydrocarbon in which the carbon chain joins itself in a ring (evidenced by LibreTexts Chemistry, 25.6: Cyclic Hydrocarbons, page 1, paragraph 2).
The dependent claims fall therewith.
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.
Improper Markush Rejection
Claim 17 is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of the components of the formulation is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
The claims are directed to a method of chemoselective conjugation comprising reacting an N-sulfonyl oxazirdine with an indole substrate in an oxidative cyclization reaction in an aqueous, biocompatible environment under conditions to form a resultant cycloadduct conjugation product.
The method involves 3 formulas (I, II and III Applicant’s claim 17), that have variables R1-R7, which according to Applicant’s claims, the variables are optionally substituted heteroatom and optionally substituted, optionally hetero-, optionally cyclic C1-C18 hydrocarbyl, and n is an integer 1-5, preferably 1-3 or 1-2.
It is duly noted that the above options for the variables can contain any variety of structures due to the variability, which can encompass various different chemical classes, such as proteins, antibodies, etc., which all have different structural features and utilities.
Applicants’ attention is directed to the third paragraph of MPEP 803.02 which discloses:
“Since the decisions in In re Weber, 580 F.2d 455, 198 USPQ 328 (CCPA 1978) and In re Haas, 580 F.2d 461, 198 USPQ 334 (CCPA 1978), it is improper for the Office to refuse to examine that which Applicants regard as their invention, unless the subject matter in a claim lacks unity of invention. In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980); and Ex parte Hozumi, 3 USPQ2d 1059 (Bd. Pat. App. & Int. 1984). Broadly, unity of invention exists where compounds included within a Markush group (1) share a common utility, and (2) share a substantial structural feature essential to that utility.”
In response to this rejection, Applicant should either amend the claim(s) to recite only an individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1) (emphasis provided).
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
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.
Claims 16-21 and 34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ZHU (Copper-catalyzed oxidative carbon–heteroatom bond formation: a recent update. Chem Soc Rev. 2016.).
Regarding claim 16, ZHU teaches the follow method:
PNG
media_image1.png
142
132
media_image1.png
Greyscale
, where Bs is PhSO2 and Moc is MeO(C=O) (scheme 35), which reads on a N-sulfonyl oxazirdine with an indole substrate in an oxidative cyclization reaction in an aqueous, biocompatible environment under conditions to form a resultant cycloadduct conjugation product.
Regarding claims 17 and 18, ZHU teaches the above structures read on the N-sulfonyl oxaziridine is of formula I, the indole substrate is of formula II, and the cycloadduct is of the corresponding formula III:
PNG
media_image2.png
184
634
media_image2.png
Greyscale
, where R1 is phenyl, R2 and R3 is Me, R4 is the alpha carbon of an amino acid, R5 is a hydrogen, R6 is a hydrogen, n is 4, and R7 is a C1 alkyl ester. Note,
PNG
media_image1.png
142
132
media_image1.png
Greyscale
(Scheme 35), is a derivative of tryptophan. Therefor R4 would be bound through the alpha carbon of an amino acid, specifically tryptophan.
Regarding claims 19-21, ZHU teaches the reactant
PNG
media_image3.png
87
90
media_image3.png
Greyscale
(scheme 35), which reads on an alpha carbon of an amino acid, that is tryptophan, that is the residue of a protein.
Regarding claim 34, ZHU teaches the reactant
PNG
media_image3.png
87
90
media_image3.png
Greyscale
(scheme 35), which reads on an alpha carbon of an amino acid, that is tryptophan, that is the residue of a protein. Since the same method is being performed, it would inherently have the ability to “provide residue-specific bioconjugation for tryptophan-based substrate functionalization”, unless proven otherwise.
Potential Allowable Subject Matter
From examination of the prior art it would appear that the application does potentially have allowable subject matter. If:
All issues related to 112s are corrected,
the limitations of the variables of claim 18 are moved to claim 16,
the structures of claim 17 were moved into claim 16,
R4 is amended to be properly defined, and
the limitation of R2 stated in claim 23, “wherein: R2 is substituted phenyl, with n substituents, selected from C1-C4 alkyl, fully or partially fluorinated C1-C4 alkyl, sulfanyl or fluorosulfanyl, C1-C4 alkoxy/ether, ester or carboalkoxy, CN, NO2, and n is an integer 1-5” is moved into claim 16 as well,
the claims will be favorably considered for a potential allowance.
Conclusion
No claims are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA L. MEJIAS whose telephone number is (703)756-5666. The examiner can normally be reached M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL HARTLEY can be reached at (571) 272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.L.M./Examiner, Art Unit 1618
/Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618
Prosecution Insights