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 .
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.
Current Status of 18/037,331
This Office Action is responsive to the amended claims received 16 March 2026.
Claims 34 and 36-60 are currently pending.
Election/Restrictions
Applicant's election with traverse of Group II, being claims 34-42, and the species below in the reply filed on 5 November 2025 is acknowledged. The species is as follows:
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, wherein n is equal to 10.
The elected species have been determined to read on claims 34 and 36-42.
Claims 43-60 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
A search for Applicant’s elected species did not retrieve applicable prior art or double patent art. The search was expanded only as necessary to arrive at the reference and rejections below. MPEP 803.02; Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App. lnt. 1987).
Priority
Applicant’s claim for the benefit of the prior-filed patent application PCT/EP2021/082073 (filed 18 November 2021) and EPO 20306402.7 (filed 18 November 2020) under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendments
The objections to the drawings, present in the previous office action, are hereby withdrawn due to the replacement drawing sheets.
The objections to the specification, present in the previous office action, are hereby withdrawn due to Applicant’s amendments.
The 35 U.S.C. 112 rejections to the claims, present in the previous office action, are partially withdrawn due to Applicant’s amendments.
The 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) rejections to the claims, present in the previous office action, are hereby withdrawn due to Applicant’s amendments. New rejections under 35 USC 102 are presented herein.
Response to Arguments
Applicant argues that the compound of GUNN previously cited by the Examiner does not read on the instant claims as currently amended. Applicant argues that the compounds of instant formula (I) are anti-inflammatory agents, whereas the compounds of GUNN are antibacterial agents. Applicant argues that the compounds of GUNN “have nothing to do with the compounds of the invention”.
The Examiner has withdrawn the previous rejections related to compound Ex. 12 of GUNN. The Examiner bases the current rejections on the propyl-bearing compound of GUNN (Ex. No. 10), which anticipates the instant non-withdrawn compounds. It is not necessary for GUNN to teach the same use of the instantly claimed compounds therein to anticipate the instant non-withdrawn claims.
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 39-42 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 39-42 each contain at least one methylene group with a subscript variable that is able to be equal to 0. For example, claim 39 recites L possibly being -(CH2)f-CRa=CRe-CRf=CRb-(CH2)g-, wherein “f” and “g” may be 0. It is unclear what the meaning of these methylene subscript 0 terms is without any explanation. Applicant should find and correct all occurrences of these terms. This renders claims 39-42 indefinite. Applicant may choose to amend all of these subscript values to begin at 1, assuming proper support.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 34 and 36-42 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by:
GUNN (Cited by Applicant in IDS of 17 May 2023; EP 0126558 A1; Published 28 November 1984).
GUNN teaches the compound below on pages 15-16 as Ex. No. 10 (the formula is given at the bottom of page 15 and the R groups are defined in the table on page 16).
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The compound of GUNN can be shown to fall within the scope of instant claim 34, and specifically within the scope of the structure below within section 3 of instant claim 34.
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Defining the variables of the structure above, of instant claim 34, as follows produces the compound of GUNN shown above: each R is a propyl group, n is equal to 12, and the compound is present as a hydrochloride salt.
Regarding claim 36: Claim 36 limits the species within the Markush groups of claim 34, but it does not require the presence of any of these groups. Therefore, as long as the prior art does not conflict with these species, any reference that anticipates the parent claim also anticipates this claims.
Regarding claim 38: Claim 38 requires R2 and R7 of the structure of claim 34 to be H. This requirement is satisfied because each of the distal nitrogen atoms in the GUNN Ex. 10 structure above is covalently bound to a hydrogen atom.
Conclusion
No claims are currently allowable.
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 JOHN D MCANANY whose telephone number is (571)270-0850. The examiner can normally be reached 8:30 AM - 5:30 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, ANDREW D KOSAR can be reached at (571)272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JDMc/Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
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