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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/3/2025 has been entered.
Status of Claims
Claims 1, 2, 5-8,10,11, and 13-18 are pending in the instant application. Claims 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 1-2, 5-8, 10, and 11 is contained herein.
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Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 7/2/2025 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 11/3/2025.
Status of Rejections
35 USC § 103
The rejection of claims 1, 2, 5-8, and 10-11 is maintained.
Applicant’s arguments, see Remarks, filed 11/3/2025, with respect to the Final Office Action mailed 7/2/2025, have been fully considered but are not found persuasive.
To reiterate the rejection of record, claims 1-2, 5-8, 10, and 11 are rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over US Patent 9,073,884 (mentioned of record previously).
The instant claims may be drawn to compositions comprising the structure of formula I in a mouthwash or dentifrice (powder, paste, liquid) wherein R1 may be C2-C24 linear or branched alkyl. In particular lower alkyl derivatives such as those described below:
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Patent ‘884 teaches the following compound and compositions thereof (see col. 12, line 21, for compound and col. 13, claim 7 and col. 4 under pharmaceutical compositions for compositions):
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. The document teaches that the compositions are used as antibacterial agents (see col. 2, line 10) and are formulated in a manner to afford a therapeutic effect (see col. 4, lines 60-65). Additionally, the compositions may be formulated as mouthwash or dentifrice and weight amounts are described therein (see col. 3, lines 33-34 and col. 8, lines 20-30).
The only difference between these similar compounds stems from variable R1 (methyl versus lower alkyl) and are considered homologs. However, MPEP states the following:
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).
Additionally, patent ‘884 even suggests that analogues of the C1 alkyl fatty acid are also suitable (see col. 12, line 44) which would motivate one skilled in the art to make these modifications. Thus, formulations of these claimed fatty acids as mouthwash/dentrifice are well documented in the art and one skilled in the art would have arrived at the claimed compounds and compositions. Thus the claimed compositions are obvious.
Applicants argue several reasons for unobviousness including 1) there is no biological activity for the compound cited by the examiner in the patent and general structural differences in “Honaucin A” which would not lead one of ordinary skill to arrive at the claimed compounds; and 2) unexpected results due to differences in activity with the cis and trans isomers of a compound referencing FIG. 1. The examiner respectfully disagrees.
In reference to prong 1) suggesting that the patent is based on the structure designated as “Honaucin A” which forms the basis of activity in said patent is not found persuasive. The rejection of record is not based on “Honaucin A” over the claimed compounds but the compound at col. 12, line 21:
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. Thus any argument referencing “Honaucin A” is found moot in terms of obviating the rejection of record. The argument that the patent does not specifically disclose any activity of the prior art compound is also found unpersuasive. The document clearly discloses this compound amongst others and their utility as antibacterial agents (see col. 2, line 10) and are formulated in a manner to afford a therapeutic effect (see col. 4, lines 60-65). Therefore, the prior art compounds were disclosed to possess activity for the skilled artisan to explore further testing and derivatization despite a specific “therapeutic index value” not being cited.
Applicants also argue that the reference does not make suggestions for preparing analogs of the cited compound where the statement “derivatives or analogues” has been misconstrued by the examiner. The examiner disagrees as claim 3 at col. 12 further defines the latter to include variations of chain length to those groups of (a) in the broadest reasonable interpretation:
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Regardless, Applicants are reminded with respect to MPEP of homologs where the following stands:
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).
Lastly in reference to prong 2) suggesting unexpected results due to differences in activity with the cis and trans isomers referencing FIG. 1; this is also found unpersuasive. The examiner would like to note that in the remarks section of Applicant’s most recent arguments at page 9, first paragraph; Applicants have admitted on record that the following compound
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may embrace all possible stereo configurations. Claims 5 and 6 are drawn to the cis stereoisomers and the argument of unexpected results is based on FIG. 1 showing a comparison of a completely different compound than what is claimed (cis vs trans 2-decenoic acid):
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. The above compound does not even possess a cyclopropane ring as required in claim 1 and these results are centered around isomerization of the alkene moiety itself and not the stereochemistry of the substituents on cyclopropane ring itself as shown in claims 5-6. Thus the argument of unexpected results are not applicable here due to the differences in structure. Thus, based on the preponderance of evidence submitted by the examiner the claimed compounds would have been considered obvious and the rejection is maintained.
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