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
This office action is a response to Applicant’s amendments/remarks after non-final rejection filed 9/1/2025.
As filed, claims 1-4, 6, and 7 are pending; and claim 5 is cancelled.
Election/Restrictions
Newly amended claims 1-4 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The newly amended claims 1-4 are drawn to a method of using a compound of instant formula (I) to reduce virulence of bacteria. At the time of invention, one of ordinary skill in the art would have recognized that there were FDA-approved drugs available for reducing bacterial virulence. For example, clotrimazole is a materially different product that can be used to practice the instant process of reducing bacterial virulence. Accordingly, the methods in claims 1-4 have been shown to be distinct invention, as required by MPEP § 806.05(h).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 1-4 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Terminal Disclaimer
The terminal disclaimer filed on 9/1/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 10,471,045; 11,052,078; and 11,446,280 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Amendments/Remarks
Applicant’s amendments/remarks, filed 9/1/2025, with respect to claims 1-7, have been fully considered and are entered. The status for each rejection in the previous Office Action is set out below.
The objection to the abstract is withdrawn per amendments.
The § 112(a) written description rejection of claims 1-7 is withdrawn per amendments; withdrawal of claims 1-4; and cancellation of claim 5.
The § 112(b) indefinite rejection of claims 1-7 is withdrawn per amendments; withdrawal of claims 1-4; and cancellation of claim 5.
The § 112 fourth paragraph rejection of claims 3-5 is withdrawn per withdrawal of claims 3 and 4; and cancellation of claim 5.
The § 102(a)(1) rejection of claims 1-5 by CAS358 is withdrawn per withdrawal of claims 1-4 and cancellation of claim 5.
The § 102(a)(1) rejection of claims 6 and 7 by CAS358 is maintained because the amendment, “for reducing virulence of bacterial in a subject by inhibition of staphyloxanthin biosynthesis of the bacteria” is considered as intended use, which is not given patentable weight. For details, see claim interpretation and rejection below.
The § 102(a)(1) rejection of claims 1-5 by CAS894 is withdrawn per withdrawal of claims 1-4 and cancellation of claim 5.
The § 102(a)(1) rejection of claims 6 and 7 by CAS894 is maintained because the amendment, “for reducing virulence of bacterial in a subject by inhibition of staphyloxanthin biosynthesis of the bacteria” is considered as considered intended use, which is not given patentable weight. For details, see claim interpretation and rejection below.
The nonstatutory obviousness-type double patenting (ODP) rejection of claims 1-7 by conflicting U.S. Patent No. 10,471,045; 11,052,078; and 11,446,280 is withdrawn per withdrawal of claims 1-4; cancellation of claim 5; and the filing/approval of the abovementioned terminal disclaimer.
Claim Interpretation
With regards to the intended use statement, such as “for reducing virulence of bacteria in a subject by inhibition of staphyloxanthin biosynthesis of the bacteria”, in claim 6; and “wherein the bacteria are staphylococci sp.” in claim 7 (because such claim is dependent of claim 6 and further limiting the bacteria in claim 6), they have not been accorded patentable weight for prior art purpose because such statements failed to limit the structure of the compound of instant formula (I) or the components of the instant composition.
The Examiner finds that any prior art compound or composition thereof having the same structure as the compound of instant formula (I) or the same components of the instant composition would be capable of performing the intended use, according to the guidance in MPEP 2111.02(II)
Claim Rejections - 35 USC § 102
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.
Claims 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chemical Abstract Registry No. 1303107-35-8, hereinafter CAS358. See IDS filed 2/9/2023.
Regarding claims 1-7, CAS358, for instance, teaches the following compound or pharmaceutical composition thereof (with unbuffered water), which encompassed all the limitations of these claims.
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Claims 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chemical Abstract Registry No. 496032-89-4, hereinafter CAS894. See IDS filed 2/9/2023.
Regarding claims 1-7, CAS894, for instance, teaches the following compound or pharmaceutical composition thereof (with unbuffered water), which encompassed all the limitations of these claims.
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Conclusion
Claims 6 and 7 are rejected.
Claims 1-4 are withdrawn.
Claim 5 is cancelled.
THIS ACTION IS MADE FINAL. 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.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 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, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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