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
Priority and Status of the Claims
1. This application is a 371 PCT/CN2022/086545 04/13/2022, which claims benefit of the foreign applications: CHINA 202110392189.3 04/13/2021, CHINA 202110866339.X 07/29/2021, and CHINA 202210201742.5 03/03/2022
2. Claims 1-16 are pending in the application.
Claim Rejections - 35 USC § 112
3. 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.
Claims 1-16 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 pre-AIA the applicant regards as the invention.
Claim 1 recites a compound of formula (I) having a variable R6. However, the variable R6 of formula (I) in claim 1 has not been defined. Correction is required.
4. 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 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 § 102
5. 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.
Claim 1 is rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Hecker et al. US 2018/0002351 A1.
Applicants claim a compound of formula (I),
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, or a pharmaceutically acceptable salt thereof, or a stereoisomer, rotamer, tautomer or deuterated compound thereof, wherein ring A is
Carbocycle, heterocycle, aromatic ring and heteroaromatic ring, Y1 is O or S, Y2 is CR5 or N, Y3 is CR5’ or N, R1-R3 are hydrogen, alkyl or alkenyl, halogen, -C(O)Rk,
-C(O)ORk and Rk is hydrogen or alkyl, R4 is hydroxy, halogen or hydroxy, and R5’ is alkyl, alkenyl, alkoxy or halogen, see claim 1.
Hecker et al. ‘351 discloses six compounds, i.e.,
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,
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228
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,
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298
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,
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234
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,
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, and
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, see column 82. They clearly anticipate the instant compounds of formula (I), wherein ring A is
Carbocycle, heterocycle, aromatic ring and heteroaromatic ring, Y1 is O or S, Y2 is CR5 or N, Y3 is CR5’ or N, R1-R3 are hydrogen, alkyl or alkenyl, halogen, -C(O)Rk,
-C(O)ORk and Rk is hydrogen or alkyl, R4 is hydroxy, halogen or hydroxy, and R5’ is alkyl, alkenyl, alkoxy or halogen.
Claim Rejections - 35 USC § 103
6. The following is a quotation of 35 U.S.C. 103(a) 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1 and 11-14 are rejected under 35 U.S.C. 103(a) as being obvious
over Hecker et al. US 2018/0002351 A1.
Applicants claim a compound/composition of formula (I),
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, or a pharmaceutically acceptable salt thereof, or a stereoisomer, rotamer, tautomer or deuterated compound thereof, wherein ring A is
Carbocycle, heterocycle, aromatic ring and heteroaromatic ring, Y1 is O or S, Y2 is CR5 or N, Y3 is CR5’ or N, R1-R3 are hydrogen, alkyl or alkenyl, halogen, -C(O)Rk,
-C(O)ORk and Rk is hydrogen or alkyl, R4 is hydroxy, halogen or hydroxy, and R5’ is alkyl, alkenyl, alkoxy or halogen, see claims 1 and 11. The instant compound of formula (I) is used for treating bacterial infection, and the bacteria is selected from
Pseudomonas acidovorans, Pseudomonas alcaligenes, Pseudomonas putida, Burkholderia cepacia, Aeromonas hydrophilia, Francisella tularensis, Morganella morganii, Proteus mirabilis, Proteus vulgaris, Providencia alcalifaciens, Pseudomonas aeruginosa, Pseudomonas fluorescens, Stenotrophomonas maltophilia, Escherichia coli, Citrobacter freundii, Salmonella typhimurium, Salmonella typhi, Salmonella paratyphi, Salmonella enteritidis, Shigella dysenteriae, see claims 13-14.
Determination of the scope and content of the prior art (MPEP §2141.01)
Hecker et al. ‘351 discloses a compound/composition comprising a compound of formula (Ic) or (Id), i.e.,
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(Ic),
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(Id), or a pharmaceutically acceptable salt thereof; wherein: J, L, M independently is CR12 or N and R12 is hydrogen, halogen, alkoxy, or haloalkoxy, Y2 is O, S or N, R2-R3 are together form a carbocycle, heterocycle or heteroaryl, R1-R2, R4 and R7 are hydrogen,
halogen, hydroxy, alkyl, alkoxy or amino, and R6 is hydrogen, alkyl, OH, -C(O)ROR, alkoxy or amino, see columns 77-82. A number of compounds read on the instant compounds of formula (I). Hecker et al. ‘351 compounds are used for treating bacterial infecyion, and the bacteria is selected from Pseudomonas aeruginosa, Pseudomonas fluorescens, Pseudomonas acidovorans, Pseudomonas alcaligenes, Pseudomonas putida, Stenotrophomonas maltophilia, Burkholderia cepacia, Aeromonas hydrophilia, Escherichia coli, Citrobacter freundii, Salmonella typhimurium, Salmonella typhi, Salmonella paratyphi, Salmonella enteritidis, Shigella dysenteriae, Shigella flexneri, Shigella sonnei, Enterobacter cloacae, Enterobacter aerogenes, Klebsiella pneumoniae, Klebsiella oxytoca, Serratia marcescens, Francisella tularensis, Morganella morganii, Proteus mirabilis, Proteus vulgaris, Providencia alcalifaciens, Providencia rettgeri, Providencia stuartii, Acinetobacter baumannii, Acinetobacter calcoaceticus, Acinetobacter haemolyticus, Yersinia enterocolitica, Yersinia pestis, Yersinia pseudotuberculosis, Yersinia intermedia, Bordetella pertussis, Bordetella parapertussis, Bordetella bronchiseptica, Haemophilus influenzae, Haemophilus parainfluenzae, Haemophilus haemolyticus, Haemophilus parahaemolyticus, Haemophilus ducreyi, Pasteurella multocida, Pasteurella haemolytica, Branhamella catarrhalis, Helicobacter pylori, Campylobacter fetus, see section [0351] in column 40.
Determination of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claims and Hecker et al. ‘351 is that the instant
claims are embraced within the scope of Hecker et al. ‘351 compounds/compositions and methods of use read on the instant compounds of formula (I) in claims 1 and 11-14.
Finding of prima facie obviousness-rational and motivation (MPEP §2142-2143)
One having ordinary skill in the art would find the claims 1 and 11-14 prima facie obvious because one would be motivated to employ the compound/composition and methods of use of Hecker et al. ‘351 to obtain instant invention.
The motivation to make the claimed compounds/compositions and methods of use derived from the known compound/composition and methods of use of Hecker et al. ‘351 would possess similar activity to that which is claimed in the reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to REI TSANG SHIAO whose telephone number is
(571)272-0707. The examiner can normally be reached on 8:30 am-5:00 pm.
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
February 9, 2026