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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/6/2026 has been entered.
As filed, claims 4 and 21-24 are pending, wherein claims 21-24 are new; and claims 1-3 and 5-20 are cancelled.
Response to Amendments/Remarks
Applicant’s amendments/remarks, filed 7/6/2026, with respect to claims 4 and 10, have been fully considered and are entered. The status for each rejection in the previous Office Action is set out below.
The § 103(a) rejection of claim 4 by Ramachandran is withdrawn per amendments.
The § 103(a) rejection of claim 10 by the combined teaching of Ramachandran and Cho is withdrawn per cancellation of the claim.
The claim objection of claims 4 and 10 is withdrawn per amendments and cancellation of claim 10.
Election/Restrictions
Regarding the newly added claims 21-24, claims 23 and 24 read on the elected species and thus, these claims will be examined herein.
Claims 21 and 22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112(a)
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 24 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) 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, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant’s amendment with respect to amended claim 24 herein has been fully considered but is deemed to insert new matter into the claims since the specification as originally filed does not provide support for the newly added limitation, “wherein the compound exhibited a minimum inhibitory concentration of ≤ 2µg/mL against Staphylococcus aureus”.
The instant specification and the originally filed claim (i.e. filed 4/2/2021) only provide support for the following:
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(paragraph 0095 of the instant specification)
Accordingly, the amendments stating, “wherein the compound exhibited a minimum inhibitory concentration of ≤ 2µg/mL against Staphylococcus aureus”, encompassed MIC outside of the abovementioned supports (e.g. less than 0.5 µg/mL), which are considered new matter.
Adequate written description means that, in the specification, the applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 [19 USPQ2d 1111] (Fed. Cir. 1991).
See MPEP 2163 regarding the guidelines for the written description requirement: "The proscription against the introduction of new matter in a patent application (35 U.S.C. 132 and 251) serves to prevent an applicant from adding information that goes beyond the subject matter originally filed. See In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 326 (CCPA 1981).
See MPEP § 2163.06 through § 2163.07 for a more detailed discussion of the written description requirement and its relationship to new matter. The claims as filed in the original specification are part of the disclosure and, therefore, if an application as originally filed contains a claim disclosing material not found in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985).
Thus, the written description requirement prevents an applicant from claiming subject matter that was not adequately described in the specification as filed. New or amended claims which introduce elements or limitations which are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (a subgenus is not necessarily described by a genus encompassing it and a species upon which it reads).”
Claim Rejections - 35 USC § 112 fourth paragraph
The following is a quotation of the fourth paragraph of 35 U.S.C. § 112:
Subject to the following paragraph [concerning multiple dependent claims], 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 (emphasis added).
Claim 23 is rejected under the fourth paragraph of 35 U.S.C. § 112 and under 37 CFR § 1.75(c), as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim(s), or amend the claim(s) to place the claim(s) in proper dependent form, or rewrite the claim(s) in independent form.
Regarding claim 23, the claim is dependent upon claim 4. The subject matter in claim 4 is drawn to a pharmaceutical composition comprising a compound of instant formula (I). The subject matter in claim 23 is drawn to a limited embodiment of the abovementioned compound.
The scope of claim 23 is broader than scope of claim 4 because claim 23 includes species that are outside of the compound of instant formula (I) (e.g.
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). Because the scope of claim 23 is broader than claim 4, the claim failed to further limit the subject matter thereof, and fail to comply with the formal requirements set forth in the fourth paragraph of 35 U.S.C § 112.
The Examiner suggests that the claims be amended in a manner such that the scope of claim 23 is commensurate with the scope of claim 4.
Claim Interpretation
With regards to the intended use statement, such as “for treating infection in a patient in need of relief from said infection”, in claim 4, they have not been accorded patentable weight for prior art purpose because such statement fails to limit the structure of the compound of instant formula (I).
The Examiner finds that any prior art compound having the same structure as the compound of instant formula (I) would be capable of performing the intended use, according to the guidance in MPEP 2111.02(II).
With regards to the phrase, “wherein the compound exhibits a minimum inhibitory concentration of ≤2µg/mL” in claim 24, the Examiner finds such phrase as simply stating an inherent property within the instant compound, and such inherent property need not be recognized at the time of the invention. In addition, the claiming of a new, unknown property, which is inherently present in the prior art does not necessarily make the claim patentable. See MPEP 2112.02(I) and (II).
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.
Claims 4 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chemical Abstract Registry No. 105400-43-9, hereinafter CAS439. See PTO-892 form mailed on 1/18/2023.
Regarding claims 4 and 24, CAS439, for instance, teaches the following compound or pharmaceutical composition (in unbuffered water), which meets all the limitation of these claims.
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Wherein: instant variables X and Y are O; instant variable n is 1; one of instant variables R1 and R2 is H and the other is phenyl; one of instant variables R3 and R4 is H and the other is phenyl; and both instant variables R5 and R6 are H.
Claim Objections
Claims 23 and 24 are objected to because of the following informalities:
Regarding claims 23 and 24, the claims recite the phrase, “The compound of claim 4”, which contains typographical error.
The typographical error can be corrected by reciting -- The pharmaceutical composition of claim 4 --.
Appropriate correction is required.
Conclusion
Claims 4, 23, and 24 are rejected.
Claims 23 and 24 are objected.
Claims 21 and 22 are withdrawn.
Claims 1-3 and 5-20 are cancelled.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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