DETAILED ACTION
Request for Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 6, 2026 has been entered.
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 .
Status of the Claims
Claims 1 – 3, 6 – 7, 9 – 17, 19 – 21 and the newly added claim 22 are pending.
Claims 1, 6, 11, 19 and 22 are rejected.
Claims 6 – 7 and 9 – 10 are objected.
Claims 2 – 3, 12 – 17 and 20 – 21 are withdrawn.
Response to Applicant’s Remarks
The rejection under 35 U.S.C. 102(a)(1) of claims 1, 11 and 19 as being anticipated by Patil et al. IN 2011MU0020 is withdrawn in view of amendments to recite the provision, when R1 is –CH2NR2R4, R4 is selected from
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Examination: Applicant’s amendments necessitate extending the search. In accordance with MPEP §803.02, examination of the Markush-type claim has been extended to the scope of formula I, wherein:
R1 is 1 –CH2R6 or
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, and
R6 is 5-membered heterocycle (triazolyl).
Noncompliant Amendment
The Amendment filed on February 6, 2026 is not compliant with the requirements of 37 CFR 1.121(c)(2) which states in part that “All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of "currently amended," and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text”. Claim 1 recites the limitation (see, page 2, lines 5-6):
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However, the moiety
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is a newly recited limitation but does not indicate proper marking (underlining the added text). Amendment is required to underline all added text in the claims to indicate the changes that have been made relative to the immediate prior version of the claims. Since Applicant’s reply appears bona fide, the amendment has been entered; however, appropriate correction is required in replying to this Office Action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 6, 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 7 and 9 – 10 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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. This is a new matter rejection.
The instant claim 1 is directed to a compound of formula I:
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, wherein
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. See, page 2, lines 5-6. According to page 2, lines 28-30, the specification discloses the compound of formula I, wherein
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The disclosure does not teach or provide any guidance that variable R1 can also be the moiety
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. As such, the disclosure does not reasonably convey to one skilled in the art that the inventors, at the time the application was filed, had possession of the claimed invention. Therefore, said amendment to the instant claim is deemed new matter.
In order to overcome the rejection, Applicant may amend to delete the moiety
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from the scope of variable R1 in the claim.
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)(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.
(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.
Claims 1, 11 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patil et al. IN 2011MU0020 A (publ. March 14, 2014) .
Thomas et al. teach compound of Example-12 (see, e.g., pages 29-30) as presented below:
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The prior art compound anticipates the instant claims as presented below:
Claims 1 and 19, directed to the compound of formula I
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, wherein:
R1 is
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;
E is 6-membered aryl (phenyl) substituted with one halogen (-F);
A is an aryl (phenyl) substituted with a single occurrence of R8; and
R8 is C5 heterocycloalkyl (thiopyranyl ring) substituted with -OH.
With respect to Claim 11, Patil et al. teach that the compound was prepared by using the procedure described in Example-1 (Method B). See, e.g., page 30. According to Step-3 of Methods A and B, cooled trifluoroacetic acid (TFA) (15 mL) was mixed with the intermediate compound, the solution was warmed to room temperature, evaporated, filtered and eluted to obtain the final compound of Example-12. See, Method-A: page 20, Step-3; Method-B: pages 21-22, Step-3. Patil et al. also teach that the compound can be used in a pharmaceutical composition comprising an effective amount of the compound and a pharmaceutically acceptable carrier to treat microbial infection in a subject. See, e.g., page 2, 2nd – 5th paragraphs. Thus, the solution qualifies as a pharmaceutical composition comprising compound of Example-12 and HCl, which qualifies as a pharmaceutically acceptable carrier (according to Official Notice).
Claims 1, 6, 11, 19 and 22 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Carcanague et al. WO 2004/048392 A1 (publ. June 10, 2004; effect. filed November 28, 2002) .
Carcanague et al. teach compound of Example 8, (5R)-3-[4’-[4,5-dihydroisoxazol-3-yl)-2-fluoro-l.l,-biphenyl-4-yl]-5-(1H-1,2,3-triazol-l-ylmethyl)-1,3-oxazolidin-2-one. See, e.g., page 89, lines 12-23. The compound of Example 8 is presented below:
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The prior art compound anticipates the instant claims as presented below:
Claims 1, 19 and 22, directed to the compound of formula I
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, wherein:
R1 is –CH2R6, wherein R6 is 5-membered heterocycle (triazolyl);
E is 6-membered aryl (phenyl) substituted with one halogen (-F);
A is an aryl (phenyl) substituted with a single occurrence of R8; and
R8 is C4 heterocycloalkyl (isooxazolyl ring).
Claim 6, wherein the compound has the formula:
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, wherein:
R1 is –CH2R6, wherein R6 is 5-membered heterocycle (triazolyl).
With respect to Claim 11, Carcanague et al. teach that the compound was prepared by using the same procedure as for Example 1. See, e.g., page 89, lines 17-20. Anhydrous N-methylpyrrolidinone was added to a mixture of the intermediate compound, tri(dibenzyliden-eacetone)dipalladium (0) and tri-2-furylphosphine after being degassed and maintained under argon. The reaction mixture was degassed again, heated at 90 °C for 64 hours, cooled, concentrated and purified to obtain the final compound. See, e.g., pg. 78, lines 14-24. Carcanague also teaches that the compound can be used in a pharmaceutical composition comprising the compound, and a pharmaceutically-acceptable diluent or carrier for treating bacterial infection in mammals. See, e.g., pg. 71, lines 15-24. Thus, the solution qualifies as a pharmaceutical composition comprising compound of Example 8 and N-methylpyrrolidinone, which qualifies as a pharmaceutically acceptable carrier (according to Official Notice).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sagar Patel whose telephone number is (571)272-1317. The examiner can normally be reached Monday - Friday: 9am to 5pm EST.
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/Sagar Patel/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626