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 .
This is a Non-Final Office Action.
Claims 1-4, 11-14 and 16 are pending and under examination. Claim 16 is a new claim.
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) (PROVISIONAL) or 119(a) (FOREIGN) or under 35 U.S.C. 120 (CONT/CIP), 121(DIV), or 365(c) (WO) is acknowledged. Applicant still has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(a) as follows: The later-filed application must be an application for a patent application (the parent for an invention which is also disclosed in the prior application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). The disclosure of the prior-filed application, Application No. 10-2019-0084956, fails to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for any claims of this application. The present formula I is not found in said document, wherein R4 is phenyl, phenoxy or phenylamino; R5 is C1 to C3 alkyl; or R2 and R3 are H, C2 to C3 alkyl, C1 to C3 acyl or halo. There may be other omissions as well. Thus, the effective filing date of the present claims 1-4 and 11-14 is international filing date of July 13, 2020. A translation may not overcome the priority issue noted above.
Specification
The substitute specification filed January 18, 2022 has been entered because it does conform to 37 CFR 1.125(b) and (c).
Claim Objections
Claim 16 is 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.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The rejection of claim(s) 1 and 2 under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Goldfarb et al. (US20090163545) as evidenced by PubChem CID 1295158 (https://pubchem.ncbi.nlm.nih.gov/compound/11837035) and PubChem 775 assay (https://pubchem.ncbi.nlm.nih.gov/bioassay/775) for
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is withdrawn based on the amendments.
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.
Claim(s) 1 and 2 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Goldfarb et al. (US20090163545) as evidenced by PubChem CID 1295158 (https:// https://pubchem.ncbi.nlm.nih.gov/compound/1295158).
The Goldfarb reference teaches the following species:
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, which was tested in a composition as part of the DeaD assay found in Examples 1 and 2 on page 5 of the reference. Thus, claims 1 and 2 are anticipated.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-4 are rejected under AIA 35 U.S.C. 103(a) as being unpatentable over Goldfarb et al. (US20090163545) as evidenced by PubChem CID 11837035 (https://pubchem.ncbi.nlm.nih.gov/compound/11837035) and PubChem 775 assay (https://pubchem.ncbi.nlm.nih.gov/bioassay/775).
The present application claims a composition comprising a compound of formula 1, wherein R1= H, R2= methyl (meta position), R3= methyl or H, R4= phenylthio and R5= H or methyl.
The reference teaches a composition comprising a compound of formula 1, wherein R1= H, R2= H, R3= H, R4= phenylthio, and R5= H:
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, which was tested in a composition as part of the DeaD assay found in Examples 1 and 2 on page 5 of the reference.
The only difference between the claimed compound and the cited species is the substitution at R2, H versus Applicant’s methyl. These compounds are homologues and are considered equivalent. The MPEP 2144.09 states “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
Thus, said claims are rendered obvious by Goldfarb et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNA MOORE whose telephone number is (571)272-9046. The examiner can normally be reached Monday - Friday, 10:00 am to 7:00 pm.
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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.
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/SUSANNA MOORE/Primary Examiner, Art Unit 1624