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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/11/2024, 12/27/2024, and 12/22/2025 have been considered by the Examiner.
Status of Claims
Claims 1-4, 7-8, 14, 23, 31, 43, 45, 48, 62, 97, 102, 108, 117, 128, 139, 148, 156, 162, 164, 165 and 167, filed on 10/11/2024, are under consideration. Claims 1, 62, 162, 165, and 167 are independent.
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 1 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chatterjee et al. (WO 2021/050961 A1).
Regarding claim 1, Chatterjee teaches making compound 5 below which is the same as claimed formula I, by reacting EFdA (Abstract, pg. 3, pg. 6, and pg. 21-22) which is similar to claimed compound XVII with a butyric acid compound similar to claimed compound XVIII wherein X is -OCOCH2Ph. The base being used here is DMAP (4-Dimethylaminopyridine) which is an aromatic amine that reads on pending claims 7-8.
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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.
Claims 2-4, 14, 23, 31, 43, 45, 48, 97, 102, 108, 117, 128, 139, 148, 156 are rejected under 35 U.S.C. 103 as being unpatentable over Chatterjee et al. (WO 2021/050961 A1).
For claims 2-4, Chatterjee teaches different X functionality of the butyric acid including X/Cl and OH (Example 2 on pg. 21 and Example 10 on pg. 24). While it is noted that this reference does not explicitly exemplify these functional groups for compound 5. However, and before the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have used these functional groups on the butyric acid of Example 5 because this involves using known leaving groups from the butyric acid with predictable results and a reasonable expectation of success—see MPEP 2143 I, 2143 A, 2143 D, and 2143.02.
For claims 14, 23, 31, 43, 45, 48, 97, 102, 108, 117, 128, 139, 148, and 156, the steps of preparing the raw material to the reaction are considered implicit; it is assumed that the raw material of the prior art are prepared by the claimed steps because, and in the absence of evidence, these chemical manipulations are obvious to one of ordinary skill in the art.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
For claims 62 and 162, no prior art was located to suggest making compound formula I by reacting compound XXII or XI; respectively.
For claims 165 and 167, a chemical structure search did not locate the claimed compounds XIX, XX, or XXII.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALI Z FADHEL whose telephone number is (571)270-0267. The examiner can normally be reached M-F 9am-6pm PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALI Z FADHEL/Primary Examiner, Art Unit 1772
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