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
Acknowledgement is made of the remarks/amendments 12/23/2025. Claims 5 and 17 stand cancelled. Claims 1, 6, 9-13, 18-20, and 22 were amended. Claims 1-4, 6-16 and 18-22 are pending and under consideration.
Applicants' arguments, filed 12/23/2025 have been fully considered but they are moot in light of the new grounds of rejection. The 102 over the teachings of Ledig (US 4118561) and the 103 over the teachings of Gitai (US 2019/0201401) – and the NSDP rejection over US11077109 (the patent resulting from US 2019/0201401) are all withdrawn in light of the amendments to limit R2. Neither Ledig nor Gitai teach or suggest or claim the R2 moieties now required by the claims. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 and constitute the complete set presently being applied to the instant application.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional 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 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. 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. 63/047612, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The provisional application provides support for R2 being arylene-alkynyl, heteroarylene-alkynyl, arylene-alkenyl, heteroarylene-alkenyl (see Formula (I) p. 2). Compound (IC) on p. 12 is the only species disclosed having an R2 as instantly claimed. This species cannot provide 112(a) support for the full scope of instant claims 1-22. There is no disclosure of the formula of claim 8 or 19. Further the provisional application makes no mention of the bacteria P. aeruginosa of claim 22.
All claims are afforded an effective filing date of 7/1/2021, the date of the PCT application. No claims receive benefit of the earlier filing date of the provisional application.
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 1-22 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 (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 11-13 were amended and now recite a concentration range “for bacterial growth.” The phrase “for bacterial growth” creates ambiguity. It is unclear if this descriptor is intended to limit the concentration range to concentrations that permit bacterial growth – or if it intends to limit the range to amounts that prevent bacterial growth. It is suggested that the claims be amended to strike through this phrase and let the range speak for itself.
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.
Claims 1-4 and 6-16 and 18-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5, and 7-20 of copending Application No. 18013302 (reference application). This rejection is maintained.
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending composition comprises a compound of Formula (I) and/or salts thereof that is identical to instant Formula (I) save for the definition of R2. R2 in the copending claims can be moieties other than those claimed but also includes alkynylene-heterocycloalkyl, alkynylene-aryl, alkynylene-heteroaryl, alkynylene-amine, alkynylene-protected amine, alkynylene-alkylsilane. The copending compounds of formula (I) anticipate instant formula (I)’s compounds.
The copending claims differ in that claim 1 recites an intended use and methods directed to anticancer activity as opposed to the instant intended use and methods directed to antibacterial activity. However, as the compounds of Formula (I) are identical in both applications they would necessarily both be capable of carrying out the intended use directed to anticancer and antibacterial activity.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant requested this rejection be held in abeyance. No arguments directed to the merits of the rejection were presented. Accordingly, the rejection is maintained.
Conclusion
Claims 1-4, 6-16 and 18-22 are rejected. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kortney Klinkel whose telephone number is (571)270-5239. The examiner can normally be reached on Monday-Friday 10 am to 7 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Jennifer Michener can be reached on 571-272-14241424. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627