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 . Claims 1-18 and 20-21 are pending in this application.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/30/2025 has been entered.
Response to Amendment
Applicant’s amendment filed 04/01/2025 in response to the previous Office Action (02/03/2025) is acknowledged. Rejection of claims 1-2 and 9 under 35 U.S.C. 102(a)(1) (item 5) has been obviated.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 10/08/2024 is acknowledged.
The examiner attempted to search applicant’s elected invention of Group I, but the search could not go to completion. During a telephone call with Mr. Caleb Bates on 10/30/2024, applicants elect a generic species wherein W = S; L1 = L2 = absent; and X1 – X4 = halo and as a single disclosed species applicants elect a first species in claim 8 to initiate the search.
PNG
media_image1.png
107
195
media_image1.png
Greyscale
Previously on 11/04/2024 and 02/03/2025, the examiner searched the elected species and expanded the search focusing on X1-X4 = halo and stopped when a prior art was found.
After Final Office Action dated 02/03/2025 and filing of the RCE, the examiner searched the elected species and expanded the search focusing on X1-X4 = halo and stopped when a prior art was found.
Note that applicant’s invention is so broad and the search is ongoing. To expedite prosecution, the examiner recommends that applicants amend the claims according to the elected invention.
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 1-2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Bujard et al. WO 2005107456 A2. Cited reference teaches the following antimicrobial compound that is almost the same as applicants when applicant’s Formula (I) has the following substituents: X1 = X3 = Cl; X2 = X4 = halo; W = S; R1 = H; L1 = -CH2-CH2-; and L2 = -CH2-.
PNG
media_image2.png
102
1591
media_image2.png
Greyscale
PNG
media_image3.png
409
1174
media_image3.png
Greyscale
The only difference between the prior art compound shown above and applicants is in the definition of L1. The definition of L1 as for the prior art compound is methylene i.e. -CH2- and applicant’s compound of Formula (I) require L1 to be at least ethylene i.e. -CH2-CH2- or L1 is absent. The prior art compound shown above was used in 102(a)(1) rejection (see Final Rejection dated 02/03/2025). Applicants have amended the definition of L1 to -CH2-CH2- to overcome the prior art rejection.
PNG
media_image4.png
375
790
media_image4.png
Greyscale
Even though applicants overcame the prior art rejection by deleting L1= -CH2- from the claims, the definition of L1 = -CH2-CH2- or L1 is absent is homologue of the deleted definition of L1 = -CH2-. Note that compounds that differ only by the presence or absence of an extra methyl group or two are homologues. Homologues are of such close structural similarity that the disclosure of a compound renders prima facie obvious its homologue. The homologue is expected to be preparable by the same method and to have generally the same properties. This expectation is then deemed the motivation for preparing homologues. Of course, these presumptions are rebuttable by the showing of unexpected effects, but initially, the homologues are obvious even in the absence of a specific teaching to add or remove methyl groups. See In re Wood, 199 USPQ 137; In re Hoke, 195 USPQ 148; In re Lohr, 137 USPQ 548; In re Magerlein, 202 USPQ 473; In re Wiechert, 152 USPQ 249; Ex parte Henkel, 130 USPQ 474; In re Fauque, 121 USPQ 425; In re Druey, 138 USPQ 39. In all of these cases, the close structural similarity between two compounds differing by one or two methyl groups was itself sufficient show obviousness. See also MPEP 2144.09, second paragraph.
In order to overcome this rejection, applicants have to show unexpected result or alternatively delete the definition of L1 = -CH2-CH2- from the claims.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto et al. Japanese Journal of Veterinary Research (1975), 23(3), 81-94. Cited reference teaches the following compound that is almost the same as applicants when applicant’s Formula (I) has the following substituents: X1 = X3 = halo selected from F, Cl, or I; X2 = X4 = Cl ; W = S; R1 = H; and L1 = L2 = absent.
PNG
media_image5.png
459
1114
media_image5.png
Greyscale
The only difference between applicants and the prior art compounds shown above is in the definition of X1 and X3. The prior art compound shown above is substituted by 4 bromo substituents i.e., X1 = X2 = X3 = X4 = Br. Applicants define X1 and X3 as halo specifically F, Cl and I as shown below.
PNG
media_image6.png
92
790
media_image6.png
Greyscale
Applicants excluded the definition of X1 = X3 = bromo to avoid prior art rejections. Since the only difference between applicants and the prior art is in the nature of the halo substituents for the variables X1 and X3, it is obvious for one skilled in the art to change from the Bromo (Br) moiety to Chloro (Cl) moiety knowing that Br and Cl are both halogens and have almost similar physical and chemical characteristics. In order to overcome this rejection, applicants have to show unexpected result under oath. This can be done by comparing the prior art compound with their compound wherein X1 or X3 = F, Cl or I.
Claims 1-3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Denisova et al. Khimiko-Farmatsevticheskii Zhurnal (1973), 7(4), 33-6. Cited reference teaches the following two antimicrobial compounds that are almost the same as applicants when applicant’s Formula (I) has the following substituents: X1 = X3 = halo selected from F, Cl, or I; X2 = X4 = Cl ; W = SO or SO2; R1 = H; and L1 = L2 = absent.
PNG
media_image7.png
106
1476
media_image7.png
Greyscale
PNG
media_image8.png
382
626
media_image8.png
Greyscale
PNG
media_image9.png
586
1293
media_image9.png
Greyscale
The only difference between applicants and the prior art compounds shown above is in the definition of X1 and X3. Applicants define X1 and X3 as halo specifically F, Cl and I as shown below.
PNG
media_image6.png
92
790
media_image6.png
Greyscale
Applicants excluded the definition of X1 = X3 = bromo to avoid prior art rejections. Since the only difference between applicants and the prior art is in the nature of the halo substituents, it is obvious for one skilled in the art to change from the Bromo (Br) moiety to Chloro (Cl) moiety knowing that Br and Cl are both halogens and have almost similar physical and chemical characteristics. In order to overcome this rejection, applicants have to show unexpected result under oath. This can be done by comparing the prior art compounds with their compounds wherein X1 or X3 = F, Cl or I.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 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, JEFFREY MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Kahsay Habte/
Primary Examiner, Art Unit 1624
May 15, 2025