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 . Claims 1-3 are examined; claims 4-11, 13-18, 20-21, and 24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and/or species in the reply filed on 20 August 2025.
Applicant’s arguments, filed 10 December 2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 recites
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; and R2 is NO2, which does not further limit the embodiment of claim 1 that recites when R1 is
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, R2 is NO2.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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 the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/081869 A1 (Kumar et al., 05/11/2018, IDS reference) (hereinafter Kumar) in view of Aldilla et al. (“Anthranilamide-based Short Peptides Self-Assembled Hydrogels as Antibacterial Agents”, 01/21/2020, IDS reference) (hereinafter Aldilla).
Kumar discloses compounds of formula (I) and the salt thereof, having antibacterial and anti-biofilm activities (abs):
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embodiments include wherein “E” is -C(=O)Re, wherein “Re” is aryl and substituted (p.3, lines 6-8) with 2 groups independently selected from groups including nitro (i.e. -NO2 (p.8, line 25)) and haloC1-6alkyl (such as -CF3) (p.15, lines 22-29); “J” is
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; “A” is -NH-; “L” is saturated hydrocarbyl group having 2 to 4 carbon items (p.3, lines 2-4); “Ra” is a guanidinium (-[NH-C(=NH)(NH3)]+) group (p.3, lines 9-12); “m” is 1 (p.3, line 14); “n” and “p” are 0 (i.e. “Rb” or “R1” substituents are not present) (p.3, lines 24 & 28). The salt of the compounds of formula (I) include an iodide salt (p.22, lines 20-21). Together these would provide a compound as instantly claimed wherein R1 is
Kumar differs from the instant claim insofar as not disclosing wherein Het may be phenyl.
However, Aldilla discloses anthranilamide-based short peptides:
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which may be incorporated in self-assembled hydrogels showing antibacterial activity against S. aureus (title, abs, §Results ¶9). Aldilla further discloses wherein modifications in the R1 location includes a phenyl group: (i.e.
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) (Fig. 2).
Accordingly, it would have been obvious to one of ordinary skill in the art to have included a phenyl group as a substituent of “J” in the compounds of Kumar since it is another known and effective substituent suitable for antibacterial compounds as taught by Aldilla.
Response to Arguments
Applicant’s arguments have been considered but are moot because new rejections necessitated by Applicant’s amendment have been made.
Allowable Subject Matter
Claims 2 and 3 remain objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 LUCY TIEN whose telephone number is (571)272-8267. The examiner can normally be reached Monday - Thursday 8:30 AM - 6:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SAHANA KAUP can be reached at (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUCY M TIEN/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612