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 Final Office Action.
Election/Restrictions
Applicant's election with traverse of Group (I) in the reply filed on June 10, 2025 is acknowledged. Group (I), drawn to compounds of formula (I) compositions, embraced by claims 1-8 was elected by Applicant. The traversal is on the ground(s) that unity of invention is satisfied under PCT Rule 13.2 and MPEP § 806.
This is not persuasive. As noted by Applicant, “[U]nity of invention exists if the claims are so linked as to form a single general inventive concept.” The single general inventive concept must define a contribution over the prior art, which is not present in the instant claims, see the art rejection below. This is all that is required to break unity of invention. Moreover, the search and/or examination burden only applies to 35 U.S.C. 121 applications.
Applicant has not pointed to any errors in the Examiner’s analysis of the different inventions. The requirement is still deemed proper and is therefore made FINAL.
Applicant elected the following species:
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170
324
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. Only claims 1-7 read on the elected species.
The elected species was searched and not found. Thus, the search was expanded.
Claims 1-16 and 20-23 are pending and claims 1-16 and 23 are under examination. Claim 23 is a new claim. Claims 9-22 are withdrawn based on the lack of unity.
Claim Objections
Claim 4 is objected to because of the following informalities: the inorganic and organic cations should not be plural. Appropriate correction is required.
The objection is withdrawn form claims 1 and 6 based on the amendments and maintained for claim 4.
The objection to claim 4 for the term “and” is withdrawn based on the amendments.
Claims 1, 3, 9 and 10 are objected to because of the following informalities: the terms, “substituted alkylene,” “substituted alkenylene,” “substituted alkynylene,” “substituted cycloalkylene,” “substituted arylene,” “substituted heteroarylene,” and “substituted heterocyclene,” “the alkenylene,” “the alkynylene,” “the cycloalkylene,” “the arylene,” “the heteroarylene,” and “the heterocyclene” are no longer found in claim 1. These terms should be removed from the claims, see page 3, lines 5-9; page 4, lines 2, 4, 6, 9, 12, and 16, page 10, lines 11-15; page 11, lines 2, 4, 6, 9, 12, and 16.
Claim Rejections - 35 USC § 112
The rejection of claims 1-7 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the phrase, “modified alkyl” is withdrawn based on the amendments.
The rejection of claim 3 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the broad recitation halogen is withdrawn based on the amendments.
The rejection of claims 3 and 4 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite since all definitions are optional, is withdrawn based on the amendments.
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 4 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 claims 4 and 11, the phrase “sodium ions, potassium ions, magnesium ions, calcium ions, ammonium, tetramethylammonium, tetraethylammonium, tetrapropylammonium and tetrabutylammonium“ lacks antecedent basis.
Claim Rejections - 35 USC § 103
The rejection of claims 1-7 under AIA 35 U.S.C. 103(a) as being unpatentable over Xiao et al. (ACS Med. Chem. Lett., 2017, 8, 1246−1251) in view of Pellicciari, R. (US 7138390) and Berge et al. (Journal of Pharmaceutical Sciences, 1977, 66(1), 1-19), is withdrawn based on the amendments.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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.
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/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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