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
Claims 1-4, 8-17, and 21-22 are currently pending.
Election/Restriction
Applicant’s election without traverse of Group I (Claims 1-4, 8-17, and 21-22, drawn to methods of providing compounds of structure 1) and the elected species C1,
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, in the reply filed on 5/22/2026 is acknowledged.
Claims 3 and 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Group II-III or unelected species, there being no allowable generic or linking claim. Thus, Claims 1-2, 4, 8-14 and 21-22 are being examined on the merits herein.
The requirement is deemed proper and is therefore made final.
C1 as used in the methods claimed was found to be free of the art. Search and consideration was extended to other compounds encompassed by structure 1.
Claim Objections
Claim 2 is objected to because of the following informalities:
Claim 2 is objected to because “the composition comprises the compound” should instead read “the composition comprises the following compound of structure 1:” or “the compound of structure 1 is C1:” or “the at least one compound is C1:”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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, 4, 8-14, and 21-22 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 regards as the invention.
Claim 1 states “Z is…C(Y)(R)” wherein Y and R are both monovalent substituents. Carbon is tetravalent forming four total bonds whereas only three bonds are shown (one to Y, one to R, and one to the cyclic core N). Exemplary compounds are shown to have an implicit additional -H bonded to the carbon. The discrepancy in bonding renders the genus of structure 1 unclear and must be resolved. For purpose of compact prosecution, “C(Y)(R)” is interpreted to be “CH(Y)(R)”. Claims 4, 8-14, and 21-22 are rejected by virtue of dependency.
Claims 1 and 8 recite “N-hydroxycarboximide” to refer to the following terminal moiety:
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. However, this structure is known in the art instead by the names formohydroxamic acid and N‑hydroxyformamide. “N-hydroxycarboximide” refers to
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, possessing an additional nitrogen not present in the former structure. It is unclear whether applicant is intending to refer to the drawn structures or the named moiety. Appropriate correction is required. For purpose of compact prosecution, “N-hydroxycarboximide” is interpreted to refer to “formohydroxamic acid” as drawn. Claims 4, 9-14, and 21-22 are rejected by virtue of dependency.
Claim 4 recites “material preservation”. Page 9 of the specification lists the same phrase without a definition. It is unclear what is encompassed by the term. Does “material preservation” require some chemical or physical processing of the material to be preserved apart from the method steps of Claim 1 or does simply applying the claimed compound to any material constitute “material preservation”? If the latter is true, the scope of Claim 4 may not further limit Claim 1 because “material preservation” through providing the compound is necessary in all embodiments of Claim 1.
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1, 4, 8-14 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Merzoug (Current Enzyme Inhibition, 2019, 15, 120-132) in view of Balamurugan (Journal of Gastroenterology and Hepatology 23 (2008) 1298–1303), Muyzer (Nature Reviews Microbiology 6, 441–454 (2008), Key Points and Abstract), and Widdel (J Pet Technol 39 (01): 97–106. 1987).
Merzoug teaches Zinc03872971,
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, as a potential PDF inhibitor in E. faecalis (Page 128, Fig. (5); Page 127, Table 2, Col 4). Zinc03872971 applies to structure 1 as follows: X is H; Z is CH(Y)(R); Y is H; and R is C2 terminated with “N-hydroxybarboxamide” (or formohydroxamic acid; see 112b rejection above). “peptide deformylase (PDF) is used as an attractive target to discover new anti-biotics” (Page 120, Introduction). Merzoug teaches “PDFs are classified into two distinct forms with relatively low sequence similarity” except for some conserved motifs (Page 120). “Type I PDFs are expressed mostly in Gram-negative bacteria, while type II PDFs derive from many Gram-positive bacteria” (Page 120).
Merzoug does not teach which classification of gram-staining or PDF E. faecalis possesses or whether said PDF type is present in a sulfide producing (sulfate reducing) bacteria (SRB).
Balamurugan teaches “Enterococci are the predominant Gram-positive cocci in human stools, and Enterococcus faecalis is the most common Entero-coccus species found” (Page 1299).
Muyzer teaches “sulphate reducers belong to approximately 23 genera,…the Gram-positive bacteria within the Clostridia [genera]. Sulphate reducers can thrive in a broad range of environmental conditions. They have been detected…in deep subsurface environments, such as oil wells” (Page 1). “Sulphate-reducing bacteria (SRB) are anaerobic microorganisms that use sulphate as a terminal electron acceptor in, for example, the degradation of organic compounds. They are ubiquitous in anoxic habitats, where they have an important role in both the sulphur and carbon cycles. SRB can cause a serious problem for industries, such as the offshore oil industry, because of the production of sulphide, which is highly reactive, corrosive and toxic” (Pages 2-3, Abstract).
Widdel teaches sulphate-reducing bacteria aka “SRB are an assemblage of specialized bacteria that thrive in the absence of oxygen and obtain energy for growth by oxidation of organic nutrients, with sulfate being reduced to H2S” (Page 97).
In summary, Balamurugan teaches Enterococci species are gram-positive, implying they possess type II PDFs and Clostridia, which are also gram-positive, possess the same PDF type. Clostridia are anaerobic SRB which produce sulfide and are highly problematic in oil wells or downholes as well as oil production offshore.
Therefore, one of skill in the art seeking to inhibit sulfide production in oil production contexts or in oil wells would be motivated to “provide” Zinc03872971, a PDF Type II inhibitor, to “contact” and inhibit SRB from producing sulfide which is “highly reactive, corrosive and toxic” because Merzoug and Balamurugan teach the compound is effective at binding PDF Type II in Enterococcus faecalis, the subtype of which is shared by Clostridia SRB, which are gram-positive bacteria. One of skill in the art, before the filing date of the present invention, would also expect success in inhibiting the bacterial sulfide production by contacting the SRB with a composition comprising Zinc03872971 in anaerobic conditions in deep-well or oil production environments because Merzoug teaches that gram-positive bacteria share a PDF subtype to which Zinc03872971 effectively binds.
Claim 2 is not obvious over the cited art. Although compounds which are 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). See MPEP 2144.09), Merzoug demonstrates that the nonpolar chain between the core nitrogen and carbonyl is positioned at Val59, a similarly nonpolar residue (Fig. (5)):
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. One of skill in the art would not seek to modify the nonpolar chain which is positioned appropriately at a nonpolar residue and also reasonably predict the same binding efficacy at the nonpolar residue or even that the hydrogen bonds at either end of the small molecule would be retained following the shortening of the chain. The specific docking scheme above illustrates noncovalent interactions that may well be disturbed by modification, suggesting modification would not yield predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
PROVISIONAL:
Claims 1-2, 4, 8-14 and 21-22 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over Claims 1-4, 8-15, and 17-18 of copending Application No. 18286254 (hereinafter referred to as Stenzel) in view of Widdel (Journal of Petroleum Technology, January 1987. 97-106).
Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to a method of inhibiting sulfide production by sulfide producing microbes comprising contacting said microbes with the same or similar compounds provided.
Both claims teach the same species as elected:
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for either inhibiting sulfide production by sulfide-producing bacteria or inhibiting the growth of sulfate-reducing prokaryotes.
Widdel teaches sulfide-reducing bacteria aka “SRB are an assemblage of specialized bacteria that thrive in the absence of oxygen and obtain energy for growth by oxidation of organic nutrients, with sulfate being reduced to H2S” (Page 97). SRB also form biofilms as claimed in Stenzel (Widdel: Page 103).
Therefore SRB, also prokaryotes, are “sulfide-producing” in “anerobic conditions” as claimed. Both methods comprise inhibiting SRB, the growth thereof, and the production of sulfide (H2S) therefrom. Both methods are taught to be applied in oil and gas reservoirs, transportation, and storage systems. One of skill in the art seeking to practice the method of Stenzel would find it obvious to do so with respect to bacteria and expect success in doing so because Widdel teaches the SRB are responsible for sulfide production. Therefore, inhibition of the biofilms comprising SRB results in inhibited H2S production.
Regarding Claims 17-18, Stenzel teaches C7
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in which the following definitions of examined structure 1 apply: X is H; Z is CH(Y)(R); Y is C6aromatic; and R is C0hydrocarbon terminated with a carboxylic acid.
An R of C0 is not an acceptable hydrocarbon according to the definition of structure 1, requiring C1-C10. However, compounds which are 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). See MPEP 2144.09. Therefore, one seeking to form an inhibitor of SRB would find it obvious to modify the compound C7 of Stenzel forming a -C1-COOH homolog of the -C0-COOH structure, rendering obvious the genus of examined structure 1. One of skill in the art would expect success in doing so and for use in the methods described in Stenzel and as claimed because “there is a presumed expectation that such compounds possess similar properties”.
Since both applications teach a method of inhibiting sulfide production comprising contacting sulfide-producing microbes with the same or similar compounds, the examiner maintains that the aforementioned claims of the instant application are substantially overlapping in scope as discussed hereinabove and are prima facie obvious over the cited claims of Stenzel.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowable.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard G. Peckham whose telephone number is (703)756-4621. The examiner can normally be reached 8:30am - 4:30pm EST.
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/RICHARD GRANT PECKHAM/Examiner, Art Unit 1627
Prosecution Insights