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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/10/2026 has been entered.
Status of Claims
Claims 9 and 11 are pending and under examination in the instant application.
Status of Rejections
35 USC § 102 (a)(1)
The rejection of claims 9 and 11 with respect to WO 2020/131980 is maintained.
Applicant’s amendments, see Remarks, filed 7/10/2026, with respect to the Office Action mailed 3/11/2026 have been fully considered but are not found fully persuasive.
To reiterate the rejection, WO 2020/131980 teaches the following compound and compositions thereof:
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(see page 25, first row, and compositions [0079]) along with the document teaching combinations of the latter with other antibiotics at [0074], page 23 which anticipates the claims. Note that the “for use” limitations do not make the claims patentable when the prior art teaches all of the claimed structural limitations, see In re Schreiber, 128F.3d 1473, 1477 (Fed. Cir. 1997) and Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003), “a statement of intended use cannot distinguish over a prior art apparatus that discloses all the recited limitations and is capable of performing the recited function,” see In re Schreiber, 128F.3d 1473, 1477 (Fed. Cir. 1997) and Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Even so, the document teaches that the claimed compounds and combinations may be used for treating bacterial infections (see abstract). Applicants are advised to be aware of all species in this document which may anticipate the claims. For example at [0059], the following claimed species are also taught:
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.
Applicants have amended the subject matter to be representative of compositions comprising the recited species in claim 9 in the following manner:
“when administered to a mammalian host infected with Neisseria Gonorrhea, inhibits growth of Neisseria Gonorrhea under physiological CO₂ conditions by severe inhibition of Neisseria Gonorrhea carbonic anhydrase”.
Applicants argue that since the compositions are defined by a specific and biological mechanism absent from the prior art (citing case law); the claims are not anticipated. The examiner respectfully disagrees.
The examiner has indicated that the document teaches compositions and combinations of these species: (see page 25, first row, and compositions [0079]) along with the document teaching combinations of the latter with other antibiotics at [0074], page 23 . The rejection also stated the following:
Note that the “for use” limitations do not make the claims patentable when the prior art teaches all of the claimed structural limitations, see In re Schreiber, 128F.3d 1473, 1477 (Fed. Cir. 1997) and Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003), “a statement of intended use cannot distinguish over a prior art apparatus that discloses all the recited limitations and is capable of performing the recited function,” see In re Schreiber, 128F.3d 1473, 1477 (Fed. Cir. 1997) and Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
Despite the claims removing the explicit “for use” language; the claims recitation of a specific function as now recited in the claims do not make the claims patentable as stated in In re Schreiber: “a statement of intended use cannot distinguish over a prior art apparatus that discloses all the recited limitations and is capable of performing the recited function,”,.
Thus, despite this new recitation suggesting that the compositions must function in the manner when administered to a host now recited; the claims are anticipated because the document teaches the structural limitations of the claimed composition and is capable of performing the recited function.
New Rejections
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 9 and 11 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 pre-AIA the applicant regards as the invention.
In the instant claim 9, the language “severe” in the recitation “severe inhibition” is not defined in the specification and there is no guidance as to ascertain the metes and bounds encompassed by the term “severe” with respect to inhibition criteria. Therefore the claim and claims dependent on it are rejected for indefiniteness. Correction is required.
See In re Zletz, 13 USPQ2d 1320, 1322, “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/ Primary Examiner, Art Unit 1624
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