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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 12, 2025 has been entered.
Election/Restrictions
Applicant’s election of Group (I) in the reply filed on February 27, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Group (I), drawn to compounds of formulas (I and II), embraced by claims 1-12 was elected by Applicant. Applicant has not pointed to any errors in the Examiner’s analysis of the classification of the different inventions. The requirement is still deemed proper and is therefore made FINAL.
Applicant elected the following species:
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, and indicated claims 1-8 and 12 read on said species.
Claims 1, 2, 5-7 and 9-20 are pending and claims 1, 2, 5-7 and 12 are under examination. Claims 9-11 and 13-20 are withdrawn based on the species election and the restriction requirement between Groups (I) and (II).
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(e) (PROVISIONAL) 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. 62/893,801, fails to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for claims 1, 2, 5-7 and 12 of this application. The compounds in the ‘801 provisional document does not embrace an oxygen at the instant variable X1 connected to the fused bicyclic core. There may be other omissions as well. Thus, the effective filing date of the present claims 1, 2, 5-7 and 12 remains the immediate filing date of August 28, 2020.
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 1, 2, 5 and 12 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 claim 1, the term “having” is vague, see the definition of T1. Chemical compounds should be defined with closed language. The term “having” may be considered open-ended, see MPEP 2111.03, Transitional Phrases, IV. Thus claims 1, 2, 5 and 12 are rejected.
The rejection may be overcome by replacing “having” with “is” on page 2 of 13.
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 § 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 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 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, 2, 5-7 and 12 are rejected under AIA 35 U.S.C. 103(a) as being unpatentable over Yamazaki et al. (Journal of Antibiotics, 2000, 53(5), 546-550) in view of Murthy et al. (WO 2018152443) and Farge et al (US 4307116).
The present application claims compounds of formula (I), wherein X1= NHC(O)C(=NOCH3)-4-thiazole-2-NH2, R1= H, R2= H, R3= H, Z1= C(O)OH and T1= CH2S-phenyl.
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The Yamakazi reference teaches the following species of formula (I), wherein X1= NHC(O)C(=NOH)-4-thiazole-2-NH2, R1= H, R2= H, R3= H, Z1= C(O)OH and T1= CH2=CH2S-phenyl.
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, see page 550, Table 3, compound 19. The Yamakazi reference does not teach T1= CH2S-phenyl.
The only differences between the claimed compound and the cited compound are: 1) the substitution at T1 is CH2=CH2S-phenyl versus CH2S-phenyl and 2) the substitution at R10, H versus Applicant’s methyl.
The first difference is addressed by the Murthy reference.
The Murthy reference teaches 3 second generation beta-lactamase ESBL- and carbapenemase-specific probes, see page 6 and below.
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While there is much variation in the rest of molecules, T1= CH2S-phenyl is maintained in all three probes. The probes vary in activity with the first one on the far left being a narrow spectrum probe, the center one being and extended spectrum probe and the one on the far right is a carbapenem-resistant Enterobacteriaceae probe.
The second difference is taught by Farge et al.
Farge teaches compounds with a methyl group at R10, see column 45, lines 30-32 and below, amongst the many other species with a methyl group at R10.
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Therefore, it is obvious to one of ordinary skill in the art to replace T1 with CH2S-phenyl and R10 with methyl since these substitutions are known in the art with similar compounds with the same utility as currently disclosed.
Thus, said claims are rendered obvious by Yamazaki et al in view of Murthy et al. and Farge et al.
Claims 1, 2, 5-7 and 12 are rejected under AIA 35 U.S.C. 103(a) as being unpatentable over Farge et al (US 4307116) in view of Murthy et al. (WO 2018152443).
The present application claims compounds of formula (I), wherein X1= NHC(O)C(=NOCH3)-4-thiazole-2-NH2, R1= H, R2= H, R3= H, Z1= C(O)OH and T1= CH2S-phenyl.
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The Farge reference teaches the following species of formula (I), wherein X1= NHC(O)C(=NOCH3)-4-thiazole-2-NH2, R1= H, R2= H, R3= H, Z1= C(O)OH and T1= CH2=CH2S-phenyl, see column 45, lines 30-32 and below, amongst the many other species with a methyl group at R10.
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.
The only difference between the claimed compound and the cited compound is the substitution at T1 is CH2=CH2S-phenyl versus CH2S-phenyl. This difference is addressed by the Murthy reference.
The Murthy reference teaches 3 second generation beta-lactamase ESBL- and carbapenemase-specific probes, see page 6 and below.
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While there is much variation in the rest of molecules, T1= CH2S-phenyl is maintained in all three probes. The probes vary in activity with the first one on the far left being a narrow spectrum probe, the center one being and extended spectrum probe and the one on the far right is a carbapenem-resistant Enterobacteriaceae probe.
Therefore, it is obvious to one of ordinary skill in the art to substitute at T1 from CH2=CH2S-phenyl to CH2S-phenyl based on the activity of the probes and the Farge er al in view of Murthy et al.
Double Patenting
The rejection of claim(s) 1-8 and 12 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No. 11385229. is withdrawn but may be reapplied as the search is extended beyond the elected species.
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.
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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