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 listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claim 5 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. In the present case, claim 5 depends on any one of claims 1-4, and claim 3 depends on claims 1 or 2. See MPEP § 608.01(n). Accordingly, the claim 5 has not been further treated on the merits.
Claim 6 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. In the present case, claim 6 depends on any one of claims 1-4, and claim 3 depends on claims 1 or 2. See MPEP § 608.01(n). Accordingly, the claim 6 has not been further treated on the merits.
Claim 7 is objected to for being dependent on objected claim 6.
Claim 8 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. In the present case, claim 8 depends on any one of claims 1-4, and claim 3 depends on claims 1 or 2. See MPEP § 608.01(n). Accordingly, the claim 8 has not been further treated on the merits.
Claims 9-12 are objected to for being dependent on objected claim 8.
Claim Rejections - 35 USC § 112
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 5 and 8-12 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 5 is indefinite wherein the claim is drawn to a batch quantity of the compound of claim 1 (to 4), but is confusing in what it is claiming or how it limits the compound itself. The claim would be more favorably read as a composition comprising the N-acetyllactosamine derivative of claim 1 comprising a quantity of greater than 10g of the N-acetyllactosamine derivative.
Claims 8-12 are indefinite wherein the claims are drawn to the “use of a quantity of the N-acetyllactosamine derivative of claim 1 (to 4) in the preparation of…”. Use claims are indefinite as it is unclear if applicants are claiming a method, and if so, what the actual steps are performed in the method.
Claim Rejections - 35 USC § 112
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 12 is 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 12 provides that the Glyc group (embraced by R in claim 8) of claim 11 is α-D-galactopyranosyl. However, claim 11 provides that R is H. As such, limiting the definition for R to include α-D-galactopyranosyl when the compound is already limited to R being H is not seen to change the scope of the claim. That is, the R-group of claim 11 is H, limiting other members of the R-group which are no longer embraced by claim 11 is not seen to further limit the claim. 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. Changing claim 12 to depend on claim 10 (or claim 9 or claim 8) would overcome this rejection.
Allowable Subject Matter
Claims 1-4 are allowed.
The closest prior art is seen to be WO16/080850 who teaches various methods of making compounds wherein the protecting groups are Bn or Ac groups – see for example compound 25 in scheme VI on page 25:
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. However, the compounds therein have multiple Bn-protecting groups wherein the present compounds require only 1 6’-Bn protecting group. This unique combination of protecting groups claimed herein, including having the single 6-O-benzyl group, are unexpectedly prepared by chromatography-free methods, and also avoid the use of toxic reagents such as cyanide and mercury salts, and inert atmospheres.
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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/TRAVISS C MCINTOSH III/Primary Examiner, Art Unit 1693
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